J25 

^0 COND EDITION MARCH 1920 

>y 1 =^ 



Trade -Marks 

Trade -Names 
Unfair Competition 

CONTENTS. 

Trade-Marks in the United States 

PAGES 

Trade-Marks in General 3 to 12 

Registration of Trade-Marks J3 to 27 

State Registrations J3 

United States Registrations... H to 27 

Trade-Marks in Foreign Countries 

Registrations in Foreign Countries 27 to 45 

Piracy of Trade-Marks 32 to 38 

Schedules of Charges 39 to 45 

Index 46 to 48 



RICHARDS &. GEIER 

277 BROADWAY 
NEW YORK 

COPYRIGHT 1920 BY WILLIAM E. RICHARDS 



Trade -Marks 

Trade -Names 
Unfair Competition 

CONTENTS. 
Trade-Marks in the United States 

PAGES 

Tfade-Mar ks in General 3 to J2 

Registration of Trade-Marks iS to 27 

State Registrations J3 

United States Registrations J4 to 27 

Trade-Marks in Foreign Countries 

Registrations in Foreign Countries 27 to 45 

Piracy of Trade-Marks 32 to 38 

Schedules of Charges 39 to 45 

Index 46 to 48 



RICHARDS & GEIER 

277 BROADWAY 
NEW YORK 

Copyright 1920 by William e. Richards 



WILLIAM E. RICHARDS OSCAR A. GEIER, M.E., E. E. 

COUNSELLOR AT LAW PATENT ATTORNEY 

Richards & Geier ^^ 

PATENTS, TRADE-MARKS, DESIGNS, COPYRIGHTS ^J V 

277 BROADWAY, NEW YORK ^^ (X^ 



NOTICE. 

The growing and, I may say, vital importance of the proper pro- 
tection of the trade-marks and trade names of American manufacturers, 
especially in foreign countries owing to the great and increasing expansion 
of the foreign trade of the United States, has induced me to prepare this 
little booklet for the convenience of our correspondents. 

This, the second edition, has been carefully revised and enlarged, but 
it should be noted that it is not intended to be exhaustive in any particu- 
lar. It is rather designed to serve as a convenient handbook, presenting 
in concise form for ready reference the features most necessary to be 
available to lawyers and manufacturers to enable them to readily under- 
stand the leading points of the law and practice on this important subject 
matter, and to take the necessary steps to secure protection for this class 
of property. 

We are always glad to furnish correspondents with more complete 
and precise information upon any specific questions either of law or 
practice, and with respect to any country or countries. 

William E. Richards, 

Counsellor at Lazv, 
(Bar of New York). 



New York, February i, 1920. 



©Cf.A565695 '^^^ 
m 26 1920 ^^. 



Trade-Marks in the United States 



TRADE-MARKS DEFINED. 

A trade-mark is a distinctive name, word, mark, emblem, design, 
symbol or device, used on articles of manufacture, or salable goods, either 
natural or artificial, to indicate or authenticate the origin or ownership 
of the goods to which it is applied or affixed, or, in other words, to dis- 
tinguish the goods of one person from those of another. Its value is in 
its employment, marking the goods on which it is placed. This gives it 
the character of property. It is, then, a symbol of reputation or good 
will. 

RIGHTFUL USERS OF MARKS. 

The use of a trade-mark does not necessarily, and as a matter of 
law, import that the articles upon which it is used are manufactured by 
its user. It may be that they are manufactured for him ; that he controls 
their production ; or even that they pass through his hands in the course 
of trade, and that he gives to them the benefit of his reputation, or of 
his name and business style. Therefore, manufacturers, merchants, factors, 
and others, may be the lawful users of marks. 

MODE OF AFFIXING MARK. 

All trade-marks must be attached in some way to the goods. The 
mode in which the mark is applied or affixed to the goods is immaterial. 
It may be printed, impressed, embossed, moulded, cast or otherwise ap- 
plied on the goods, or it may be affixed to the goods, or to packages 
containing the goods, by means of a label, plate, or otherwise. It may 
be watermarked in translucent fabrics or materials, and in Hay & Todd 
Mfg. Co. V Querns Brothers, 86, Off. Gaz. 1323, it wa-s held to be a suffi- 
cient method of affixing the mark to use it in advertising and to place a 
lithographed fac-simile of it on a card, in a box containing a quantity of 
the goods. On the contrary, it has been held that to display the mark 
on a show-card placed on lots of candy in a show window, is not sufficient 
to establish a trade-mark right therein. Mere use of a mark in adver- 
tising or on stationery does not create any exclusive trade-mark right. 



Trade-Marks in General. 



A TRADE-MARK IS PROPERTY. 

The right to a trade-mark exists in common law, and is protected 
even in the absence of statute. Good will is property, and the courts 
proceed upon the ground that the trade-mark user has a valuable interest 
in the good will of his trade or business, and that having appropriated 
to himself a particular and distinctive label or sign or trade-mark, indica- 
ting that the article is manufactured or sold by him or by his authority, 
or that he carries on his business at a particular place, he is entitled to 
protection against any other person who pirates upon the good will of 
his customers or of the patrons of his trade or business, by using his 
mark without his authority or consent. 

The relief afforded by the courts is, however, often expressly placed 
upon the ground of an exclusive property right in the use of the trade- 
mark itself. 

ADOPTION AND USE OF MARK NECESSARY. 

The adoption and actual use of the mark in commerce is a pre-re- 
quisite to the ownership thereof, in this country. Mere adoption with 
intent to use in the future will not create a trade-mark right. 

It is not necessary that the mark should have been used for any 
definite or considerable time, and a single actual use confers a right to 
such word or mark as a trade-mark, if the article with the mark upon it 
has actually become a vendible article in the market, with the intent 
upon the part of the proprietor to continue its production and sale. 

As above stated, the mere use of a mark in advertising or on station- 
ery does not create any exclusive trade-mark right. 

PRIORITY OF ADOPTION AND USE. 

The basis of the right to a trade-mark is priority of adoption and 
actual use in trade. 

The first one to so use a given trade-mark upon a particular class 
of goods acquires the prior and exclusive right to use it upon that class 
of goods; another person may subsequently apply the same mark to a 
different class of goods, and, if he is the first to do so, he also acquires an 
exclusive right to the use of the mark for the goods embraced in the 
different class. 

A casual, intermittent, inconsiderable, and experimental use is in- 
sufficient to confer priority of right, although prior in point of time. 

VALID TRADE-MARKS. 

While any mark such as above described, which has been adopted 
and used for the purpose of identifying certain goods as being of a certain 
origin or ownership may constitute a valid trade-mark, it is necessary 
that it shall be such as will not prejudice the rights of others if 
exclusively appropriated, and certain rules have been established in 
practice, by the decisions of the courts in trade-mark cases, which aid 



Trade-Marks in General. 



in determining what may, and what may not, constitute a vahd trade- 
mark. The following are of interest : 

The mark must be free from misrepresentations and bad faith. 

A trade-mark must consist of some definite word or words, sign, or 
device, or combination of the same. It must be distinctive, and either 
by itself, or by association and use, indicate a distinctive origin or owner- 
ship of the goods to which it is attached, so that it will perform its func- 
tion of distinguishing the owner's goods from those of other persons. 

INVALID TRADE-MARKS. 

An exclusive trade-mark cannot be: 

1. A sign, mark, or form of words which, from the fact conveyed 
by its primary meaning, others may employ with equal truth and equal 
right for the same purpose. 

2. Words, names, and marks already known and in general and com- 
mon use in the trade cannot be exclusively appropriated as a trade-mark. 

3. A mark or name so similar to an existing trade-mark of another 
person as to create deception or confusion as to identity of goods cannot 
be a valid mark. 

4. Descriptive words, marks, terms, devices, or names, which refer 
to the quality, style, character, grade, or class of the goods, or that are 
merely descriptive of the goods or business to which they are applied 
are not valid marks. A peculiar or distinctive style of printing, or merely 
misspelling, or using a foreign language equivalent of a common descrip- 
tive word, will not sustain an otherwise objectionable mark as a valid 
trade-mark. 

Words merely descriptive of the ingredients of an article, or of its 
mode of composition, and words or marks merely indicating superior 
quality, excellence, popularity, or extent of use, do not constitute a valid 
trade-mark, and the same is true of words indicating the purpose or use 
of the article, or the effect produced by its use. 

5. Geographical or place names; although if used in an arbitrary or 
fanciful way to indicate origin and ownership regardless of location, they 
may be sustained as valid trade-marks. 

6. Personal or corporate names alone are not valid marks, but when 
combined with other unobjectionable words or devices they may con- 
stitute a good trade-mark. 

7. Color alone cannot be a valid trade-mark, but if used in a particu- 
lar design, such as a triangle, square, or circle, or used in connection 
with other devices or characters, it may form part of a good trade-mark. 

8. Neither the mere form, size, or shape of the goods, packages, or 
labels, the package itself, or the substance, or the whole or any useful 
part of the article, can be appropriated as a trade-mark. 

9. Pictures of the article itself, or of the goods contained in the 
package, or which are descriptive of the goods, are not good marks. 



Trade-Marks in General. 



EXAMPLES OF INVALID MARKS. 

As examples of marks that have been declared invalid because either 
descriptive, geographical, or containing a misrepresentation, may be 
mentioned. 

Acid Phosphate, for medicines. Health Food, for foods. 

Aluminum, for w^ashboards. International Banking Co., for 
Asbestos, for shoes, and wall paper. name of concern. 

Barber's Model, for razors. Inter-phone, for telephone ap- 
Borax, for soap. paratus. 

California Syrup of Figs, for medi- Keepclean, for toilet brushes, 

cines. Kid Nee Kure, for medicine. 

Castoria, for medicines. Linoleum, for floor cloth. 

Cherry Pectoral, for medicines. Malted Milk, for infant's food. 

Copenhagen, for snuff. Naphthuy for soap. 

Crack Proof, for rubber. No Sag, for hand bags. 

Dessicated, for codfish. Pork Roll, for pork products. 

Durham, for tobacco. Rubberset, for brushes. 

Elastic Seam, for drawers. Rubber oid, for roofing. 

Elgin, for watches. Standard, for phonographs. 

Famous, for stoves. Straight Cut, for cigarettes. 

Favorite, for letter-file. United States, for dental rooms. 

Getwell, for medicines. Valvolene, for oils. 

Gibraltar, for lamp chimneys. Wore ester shire, for sauce. 

Gold Label, for bread. Fa/^, for locks. 
Granite, for enameled ware. 

WHAT MAY BE VALID TRADE-MARKS. 

1. Existing words used in an arbitrary or fanciful way. 

2. Abandoned trade-marks may be appropriated by others and be- 
come their exclusive property even as against the original users. 

3. Marks used upon a certain class of goods by one owner may be 
appropriated for a different class of goods by another. 

4. An invented or newly coined word or phrase, or some arbitrary 
or fanciful term, figure or device, not descriptive of the article to which 
it is applied. 

5. Numerals, letters, and initials are valid trade-marks when used 
in an arbitrary manner, but not when used to indicate grade or quality. 

6. Fictitious, mythological, or historical names of persons or things. 

7. Devices, symbols, or pictures, either alone or in combination with 
words or names, which are not by their inherent character descriptive 
of the character or quality of the goods, and contain no misrepresenta- 
tions of fact with relation to the goods or their origin. 

8. A portrait of the proprietor of the goods, or of celebrities, either 
alone or in combination with words or other devices, but portraits of 
living persons should not be used without their consent. 

9. The autographic signature of the proprietor either alone or in 
combination with words or other devices. 

10. Foreign words, phrases or letters if not descriptive of the article 

11. A collocation of words one or more of which must be arbitrary 
and distinctive. 



Trade-Marks in General. 



EXAMPLES OF VALID MARKS. 

As examples illustrative of marks which have either been protected 
against unfair competition, or the right to their use as trade-marks been 
upheld by the courts, the following may be given: 

Alderney, for oleomargarine. 
Anatolia, for licorice. 
Anchor Brand, for wire. 
Auburn Lynn, for shoes. 

A. V. H., for gin. 

B. B. B., for medicine. 
Beaded, for lace tips 
Bovril, for meat extract. 
Bromidia, for medicine. 
Centennial, for clothing. 
Charter Oak, for stoves. 
Cottolene, for lard substitute. 
Crown, for baking powder. 
Cream, for baking powder. 
Cuticura, for toilet soap. 
Don Carlos, for olives. 
Electro-Silicon, for poHshinpf ma- 
terial. 

Elk, for cigars. 

Emollea, for toilet cream. 

Eureka, for fertilizers ; shirts ; fire 

hose, etc. 
Excelsior, for stoves; soap, etc. 
G. J. G., for automobiles. 
H. M., for plumber's suppHes. 
Home, for sewing machines. 
Hoosier, for drills. 



Hygeia, for water. 
Insectine, for insect powder. 
Iron Clad, for boats. 
Lacto-Peptine, for medicine. 
Lightning, /or hay knives. 
Magic, for scythe-stones. 
Magnetic Balm, for ointment. 
Nickel, for soap. 
No-To-BaCy for medicine. 
0. F. C, for whiskey. 
Omega Oil, for liniment. 
Radium, for silk. 
Roof Leak, for roof paint. 
Royal, for baking powder. 
Sapolio, for cleaning compound. 
Shawknit, for stockings. 
Star, for shirts, iron, oil, soap, etc. 
Sunlight, for soap. 
Sunshine, for stoves. 
Trilby, for gloves. 
Valvoline, for lubricating oil. 
Velvet Grip, for hose supporter. 
Vulcan, for matches. 
Wearever, for aluminum ware. 
Yucatan, for leather and leather 
goods. 



DESCRIPTIVE AND SUGGESTIVE MARKS DIS- 
TINGUISHED. 

It is very difficult to draw a clear line of demarcation between 
names, words, and symbols that are inherently descriptive in char- 
acter, and which are therefore not proper subject-matter for exclusive 
appropriation as trade-marks, and those that are merely suggestive, 
and are not objectionable as being descriptive. Indeed the courts in 
the decisions handed down in such cases often seem contradictory and 
confusing. 

Suggestive names and words are often very valuable, and if 
merely suggestive or figurative they may form valid marks, notwith- 
standing that they may also be indirectly or remotely descriptive. 

Perhaps as good a rule as any to distinguish between descriptive 
and suggestive marks is the following: if it requires the exercise of 
the imagination to make the mark descriptive of the goods or business 
or some character or quality of the same, then the mark is suggestive 
only, and in the contrary case the mark will be descriptive. 

As examples of suggestive marks may be instanced the represen- 
tation of a domino for domino sugar; "Crystal" for castor oil; "Da- 



8 Trade-Name : — Unfair Competition. 

mascus blade" for scythes; "Water White" for kerosene; "Annihila- 
tor" for medicine; "Baffle" for safes; "Elastic" for bookcases; "Epi- 
cure" for canned salmon; "Filofloss" for silk; "Holeproof" for ho- 
siery; "Norub" for laundry aid; "Pain-Killer" for medicine; "Wear- 
ever" for aluminum ware. 

TRADE-NAMES. 

Perhaps as good a definition of the term "trade-name" as any is 
the one given by Hopkins in his excellent work "Hopkins on Trade- 
Marks," page 13, as follows: "A trade-name is a word or phrase by 
which a business enterprise or business location or specific articles of 
merchandise from a specific source are known to the public, and which 
when applied to merchandise is generic or descriptive and hence not 
susceptible of appropriation as a technical trade-mark." 

Trade-names are names which are used in trade to designate a 
particular business of certain persons, or the location of a business, or 
specific goods, but which are either not applied or affixed to the goods 
when sold, or which, when so applied or affixed, are for one reason or 
another not capable of exclusive appropriation as technical trade- 
marks. 

Trade-names are acquired by adoption and user, and belong to 
the first one to adopt and use them and give them value. 

Trade-names are protected by the courts against misuse or imita- 
tion upon the ground of unfair competition. 

UNFAIR COMPETITION. 

Unfair competition is the passing of¥, or attempt to pass off, the 
goods or business of one person for the goods or business of another 
person, and any conduct, the natural and probable effect of which is to 
deceive the public and to pass off the goods or business of one person 
for that of another amounts to actionable unfair competition. 

In cases of unfair competition the courts of equity intervene to 
protect from fraud both the complainant whose business is or may be 
injured by unfair and fraudulent competition, and the public who are 
consumers of his merchandise. 

Unfair competition embraces all forms of misrepresentations of 
identity. In the language of the Supreme Court of Wisconsin "unfair 
competition in trade is not confined to the imitation of a trade-mark, 
but takes as many forms as the ingenuity of man can devise. It 
may consider the imitation of a sign, a trade-name, a label, a wrapper, 
a package, or almost any other imitation by a business rival of some 
distinguishing earmark of an established business, which the court 
can see is calculated to mislead the public and lead purchasers into 
the belief that they are buying the goods of the first manufacturer." 

The basic principle is that no one has a right to dress up his goods 
or otherwise represent them in such a manner as to deceive an intend- 
ing purchaser and induce him to believe he is buying the goods of 
another. Relief from unfair competition is properly afforded by the 
courts upon the ground that one who has built up a good will and 
reputation for his goods or business is entitled to all the benefits 
therefrom, as such good will is property, and like other property is 
protected from invasion. 



Doctrine of Secondary Meaning. 



The courts of equity will not allow a man to palm off his goods 
as those of another, whether his misrepresentations are made by word 
of mouth, or more subtly by simulating- the colocations of details of 
appearance by which the consuming public has come to recognize the 
product of his competitor, and therefore will intervene to prevent a 
rival trader from imitating names,- marks, labels, forms of package, or 
dress of goods, so as to deceive purchasers and pass off his goods as 
those of another, and this irrespective of any question of exclusive 
proprietary right in the names, marks, labels, etc. 

AVhether or not the goods or business of the subsequent trader 
have been sufficiently distinguished from those of a competitor to 
avoid unfair competition is a question of fact to be determined in 
each case. Similarity of general appearance sufficient to cause con- 
fusion or to deceive the public is the test, and the public cannot be 
expected to exercise close inspection and discrimination. If the dis- 
tinctive part of a name or mark is taken or imitated, minor dift'erences 
afford no defense, and alleged distinguishing features which are not 
likely to be observed or to attract attention are insufficient. 

Copying or Imitation of Circulars. 

The copying or imitation of the circulars, advertisements, or an- 
nouncements of a competitor, calculated to deceive the public and to 
pass off the goods or business of one person for those of another is 
strong evidence of fraud and unfair competition and is ground for an 
injunction. 

Substitution of Goods. 

A manufacturer or dealer may not substitute the goods of one 
person for those of another when the latter's merchandise is ordered, 
without giving notice to the purchaser of the fact. This is unfair 
competition and actionable, as it is fraud not only upon the public 
but also upon the manufacturer whose merchandise was ordered, and 
whose business is injured by the substitution. 

In N. K. Fairbanks Co. v. Dunn, 126 Fed. Rep. 227, the Court in 
granting an injunction in such a case said: 

"The law is too well settled upon this point to require extended 
quotation. The manufacturer of an article placed upon the market 
for sale has the right to demand of the dealer who purports and ad- 
vertises to sell it that he deliver his product when called for by the 
customer." 

THE DOCTRINE OF SECONDARY MEANING. 

Words or names that in their primary meaning are generic or 
descriptive, and are therefore not capable of exclusive appropriation 
as a valid trade-mark, such, for example, as words or symbols natu- 
rally descriptive of the goods, or the place where they are made, or 
the name of the maker, may acquire a secondary meaning by long 
and continued use in connection with the goods or business of a 
particular trader, provided that such use has been sufficient to have 
caused such words or names to be understood by the public as desig- 
nating the goods of that particular trader. 



10 Duration of Right. 



Such words or names therefore have both a primary and second- 
ary meaning. In their primary meaning they are public property and 
anyone may use them. In their secondary meaning their employment 
and use may be protected upon the ground of unfair competition. 

In Standard Varnish Works v. Fisher, 153 Fed. Rep. 928, 930, the 
Court said as follows : 

"Words or symbols naturally descriptive of the product, while 
not adapted for exclusive use as a trade-mark, may yet acquire, by 
long and continued usage in connection with the preparation and by 
association with the name of the manufacturer, a secondary meaning 
or signification, such as will express or betoken the goods of that 
manufacturer only, and in this sense he will be entitled to protection 
from an unfair use of the designation or trade-name by others that 
may result in his injury and in fraud of the public." 

There is an exclusive right to such a secondary meaning of a 
word or name that has been deemed a property right which will be 
protected by the courts, but this exclusive right is strictly limited to 
the secondary meaning of the word or name. 

DURATION OF RIGHT. 

The right to protection in the use of a common law trade-mark 
is not limited and may continue until affirmatively terminated in some 
manner, as, for example, the abandonment of the trade-mark ; or the 
discontinuance of the business and the passing away of the good will 
associated with it ; or as the right may be modified or lost by laches ; 
misrepresentation and fraud, or loss of distinctiveness. 

Abandonment. 

An actual intention to permanently give up the use of a mark is 
necessary to constitute abandonment of it. Mere non-user, even for 
a considerable time, is not necessarily an abandonment, but long- 
continued disuse coupled with circumstances showing an intent to 
permanently give it up, will constitute abandonment. 

The burden of proving abandonment is upon the party alleging it 
and it must be strictly proved. 

Laches, Acquiescence. 

Laches, or delay in bringing action against infringers, may be a 
bar to an accounting for profits and a recovery of damages for past 
infringement, but is no bar to an injunction to prevent future acts 
where the legal right is clear. 

Acquiescence in an infringing use of a mark by a competitor, al- 
though with knowledge of the infringing act, does not amount to con- 
sent, and is no bar to relief against a continuance of the infringement, 
although it may operate as a bar to the recovery of damages and an 
accounting for profits. 

Misrepresentation and Fraud. 

Material misrepresentation on the part of trade-mark user 
amounting to a fraud, may deprive him of the right to a remedy for 
infringement of his mark, or for any other form of unfair competition 
in business. 



Actions for Infringement. ii 

It has been so held in cases where there have been misrepresen- 
tations as to the business, goods, or their ingredients, in advertise- 
ments or labels, but where such statements have been discontinued 
prior to the commencement of suit their former publication is not 
necessarily a bar to relief. 

Mere trade puffing, or boastful or extravagant statements; im- 
material or slight inaccuracies, not substantially deceptive when 
fairly considered ; or, innocent misrepresentations made without 
intent to deceive, are not a bar to relief. 

Loss OF Distinctiveness. 

The exclusive right to a trade-mark may be lost if such mark 
for any reason loses its distinctiveness so that it no longer indicates 
a particular origin or ownership. The test whether or not this is the 
case is whether the use of it by other persons is still calculated to 
deceive the public. 

Extensive, long continued, and indiscriminate use by a number 
of different persons will result in a loss of distinctiveness and cause 
the loss of the exclusive right to a mark. 

Permitting a limited use by another, or scattering infringements 
by a number of persons, and even extensive piracy by a single indi- 
vidual, have 'been held not to have this effect. 

ACTIONS FOR INFRINGEMENT AND UNFAIR 
COMPETITION. 

The appropriate courts of the different States have jurisdiction 
of such actions, even in the case of a trade-mark registered under the 
federal statute, the ordinary rules as to parties and practice being 
fully applicable. 

The Unrted States circuit courts have jurisdiction of suits for 
infringement of trade-marks registered under the federal statute 
without regard to the amount in controversy, or the citizenship of 
the parties. Where the trade-mark has not been registered under the 
federal statute they also have jurisdiction in cases where there is a di- 
versity of citizenship of the parties, and where the amount or value 
of the matter in controversy exceeds the sum of two thousand dol- 
lars exclusive of interests and costs. 

Federal district courts have no jurisdiction of suits for infringe- 
ment of trade-marks. 

In cases of trade-mark infringement and unfair competition, the 
courts acting on the equity side will grant injunctions where the legal 
right is clear, and where the plaintiff prevails and the Court believes 
that he is entitled to a substantial recovery, damages will be awarded 
and an accounting as to the defendant's profits will be ordered. 

SUGGESTIONS FOR THE SELECTION OF TRADE- 

MARKS. 

Before we proceed to the subject of registration of trade-marks, and 
believing that a few suggestions upon this point may be appreciated, we 
offer the following ideas : 



12 " Suggestions for Selection of Marks. 

First: It will be obvious that the most desirable and effective marks 
are those that are (a) simple in design; (b) easy to understand and re- 
member; (c) attractive in appearance; and, (d) if the mark is an arbi- 
trary word, easy to speak, spell, and attractive in sound. 

Second: It must always be remembered that marks that are descrip- 
tive, or relate to the character or quality of the goods, or that are descrip- 
tive of the container or package, as well as geographical names, except 
when the latter are used in a fanciful or arbitrary sense, are unregisterable. 

The misspelling of an unregisterable word, or its arrangement in a 
fanciful design, does not relieve it from objection if it conveys informa- 
tion of a descriptive character. 

A trade-mark will not be registered if it resembles a known mark 
already in use by another for goods of the same descriptive qualities, or 
so closely resembles such a mark as to be likely to cause confusion. Decep- 
tive or misleading marks are unregisterable. 

A trade-mark cannot be merely a color, a shape, a package or a con- 
tainer, and descriptive words and terms taken from a foreign language 
are unregisterable. 

Third: The following are types of trade-marks that are proper sub- 
jects for registration. 

Arbitrary numbers, letters, or symbols, or a combination thereof with 
a word or words, when not descriptive, or trade terms relating to the 
articles with which they are used. 

A word or words used in a fancy (non-descriptive) sense, such as 
"'Onyx" for hosiery, or ''Velvet" for tobacco, and coined words or phrases, 
such as "Kodak" for cameras, "Socony" for oil products, and suggestive 
words, if not descriptive, are very desirable marks. 

Pictorial marks are ordinarily registerable, and frequently valuable, 
as for example the domino of the Crystal Domino Sugar, the chocolate 
girl of Baker's Chocolate, and many others. Such marks are often very 
suggestive without being descriptive. 

Personal names are registerable when they are written, printed, or 
stamped in such a way that the peculiarities of the writing, printing or 
design constitute the most particular feature of the mark. Autographic 
signatures, either with or without a portrait of the individual are register- 
able if so individualized. Names of historical persons or mythological 
characters may be registered, but the name of a living person cannot be 
used without consent. 

Portraits of living persons may be used by consent, and portraits of 
historical persons are frequently used. 

Fourth: Lastly, a trade-mark is not registerable if its registration 
would be against public policy, or if its subject matter is scandalous or 
immoral, or if it is applied to articles harmful in -themselves. 



State Registrations. 13 



Registration of Trade-Marks 

While the right to the exclusive use of a trade-mark is acquired 
under the common law by the first person to adopt and use the mark 
in commerce upon a particular class of goods, without any registra- 
tion whatever, the registration of the mark so adopted and used is 
declarative of ownership and prima facie evidence of the same. 



STATE REGISTRATIONS. 

With but very few exceptions all of the States have enacted laws 
providing for the registration of trade-marks, and many of the States 
have included provisions for the like registration of la'bels, tickets, 
wrappers, advertisements, and other wrappings and packages for 
articles of commerce. 

Penal enactments have also been passed by many States pro- 
viding punishment for the misuse of trade-marks registered within 
their borders. 

The State statutes are so numerous and their provisions so varied 
that we cannot do more than refer to them in the limited space avail- 
able for the purpose in this booklet. We would add, however, that 
copies of these laws are on file in our office and available to our clients 
at any time. We will also gladly respond to any requests for specific 
information. 

Searches as to Novelty. 

As a trade-mark to be valid must not have been appropriated by 
a prior user for the same class of merchandise at the date gi its 
adoption, it will be apparent that careful traders may desire to make 
searches as to novelty among the marks registered in the several 
States, in advance of the final adoption of a mark for their own use. 

AVe are prepared to make such searches for our clients, and the 
expense of so doing per State is not high. (See Schedule of Charges.) 

Applications for Registration. 

AVe are also prepared to attend to the registration of trade- 
marks in any State or States having registration laws, as well as all 
matters in connection with trade-marks both before and after regis- 
tration. 

The expense in connection with State registrations is inconsider- 
able. (See Schedule of Charges.) 

The attention of our correspondents is especially directed to the 
possibility of obtaining protection for their labels, tickets, advertise- 
ments, wrappers and packages by means of State registration. In 
many cases this protection should be important and valuable. 



14 Federal Registrations. 

Registration in the United States Patent Office 

The Law. 

Registration of trade-marks may be effected in the United States 
Patent Office under the Act of February 20, 1905, as amended by the 
Acts of May 4, 1906, March 2, 1907, February 18, 1909, and Act of 
February 15, 191 1. 

Advantages of This Registration. 

The effect of registration under these laws affords the following 
benefits : 

(a) Establishes prima facie evidence of ownership. 

(&) EstabHshes the right to bring suit for infringement in the 
United States Courts, regardless of the question of residence or amount 
in controversy. 

(c) Enables the owner to effect registration in foreign countries 
where proof of registration in the owner's home country is a prerequisite. 

{d) Enables the owner to prevent the admission into the United 
States of foreign manufactured articles of the same class bearing the 
same or similar marks. 

{e) Where a prior application for registration has been regularly 
filed in a foreign country, which by treaty, convention or law affords 
similar protection to citizens of the United States, an application in this 
country, if filed within four months from the date of such foreign appli 
cation, is accorded the same force and effect as is filed on the date of said 
foreign application. 

(/) Secures the benefits of the International Convention for the 
protection of industrial property, with the rights of priority for filing 
applications, and protection of trade-names in the thirty countries belong- 
ing to that Convention. 

WHAT MAY BE REGISTERED. 

Any mark by which the goods of the owner of the mark may be dis- 
tinguished from other goods of the same class, which is used in commerce 
with foreign nations or among the several States or with Indian tribes, 
subject, however, to the limitations set forth in the next paragraph. 

WHAT may not be REGISTERED. 

The following marks are not registerable : 

(a) Those which consist of or which comprise immoral or scan- 
dalous matter. 

{h) Those which consist of or comprise the flag or coat of arms or 
other insignia of the United States, or any simulation thereof, or of any 
State or municipality, or of any foreign nation, or of any design or picture 
that has been or may hereafter be adopted by any fraternal society as 
its emblem, unless it is known to the satisfaction of the Commissioner 



Registrations in U. S. Patent Office. 



15 



that the mark was adopted and used as a trade-mark by the applicant or 
apphcant's predecessors, from whom title is derived, prior to the date of 
its adoption by such fraternal society as its emblem. By Act of Jan. 5, 
1905, the sign of the Red Cross of America is prohibited from use for 
advertising or trade purposes. 

(c) Marks which are identical with a registered or known trade- 
mark owned and in use by another for merchandise of the same descrip- 
tive properties, or which so nearly resemble such a tradcrmark as to be 
likely to cause confusion or mistake in the mind of the public, or to 
deceive purchasers. 

(d) Marks which consist merely in the name of an individual, firm, 
corporation, or association, not written, printed, impressed, or woven in 
some particular or distinctive manner, or in association with a portrait of 
the individual, but this does not prevent the registration of a trade-mark 
otherwise registerable because of its being the name of the applicant or 
a portion thereof. 

(e) Mere words or devices which are descriptive of the goods with 
which they are used, or of the character or quality of such goods, or 
merely a geographical name or term. 

(/) No portrait of a living individual may be registered as a trade- 
mark except by the consent of such individual evidenced by an instrument 
in writing. 

(g) No trade-mark will be registered which is used in unlawful 
business, or upon any article injurious in itself, or which has been used 
with the design of deceiving the public in the purchase of merchandise, 
or which has been abandoned. 



EXAMPLES OF UNREGISTERABLE MARKS. 

As illustrations of marks held to be unregisterable under the above- 
named restrictions may be noted : 

I. Because of the similarity to prior trade-marks. 



Registration applied for 

"A. A." 

"American Lady" 

"Autola" 

"Dyspepticide" 

"Floradora" 

"Green Ribbon" 

"Maple Leaf" 

"Old Dutch" 

"Powelton" 

"Sunshine" 

A Crescent, Star, and letters 

F. D." 
"Billy Blue" 
"Beats the Dutch" 



'R. 



Refused on 

"A. L" 

"American Girl" 
"Au-to-do" 
"Dyspepticure" 
"Floradena" 
"Green River" 
"Silver Leaf" 
"Royal Dutch" 
"Powell's Run" 
"Sunbeam" 

A Crescent and Star 
"Little Boy Blue" 
"Old Dutch Cleanser" 



i6 Registrations in U. S. Patent Office. 

2. Because descriptive of the goods, or the character or quality of 
the same. 

Rust ? Never, for hooks and eyes. SafeTseal, for envelopes, wallets, 

Fits-U, for eyeglass frames. ^tc. 

Hold-On, for clutches for hat-pins. Verihest, for canned vegetables, 

No-Ripf for harness sweat-pads. fruit, etc. 

Asbestos, for shoes made of leather Wearwell, for sheets, pillow-cases, 

and asbestos. etc. 

Health Food, for bread and crack- r^_ . ' t^^ii ^f.^' 



ers. 



Keeps Kold, for boxes with heat- 
insulating material. 
Nextoheer, for a malt drink. Tub Test, for overalls and work 

Silver Dip, for silver cleaner. coats. 

Self-Loading, for cartridges. Textul, for oil for cleaning textiles. 

Bestok, for toilet paper. Slo Flo, for lubricating oils. 

Everlasting, for vehicle wheels. . Service, for rubber and fabric belts. 

3. Because geographical. 

Oriental, for typewriter ribbons. Hollander, for beer. 

Ozark, for overalls. Orange Grove, for flour. 

Mattawan, for shirts. French Satin, for paper. 

4. Because both geographical and descriptive. 

Kenosha-Klosed-Krotch, for under- American Strength, for coffee. 

wear. Parisian Ivory, for tooth-brushes. 

French Tissue, for paper. 

5. Because merely relating to dress or ornamentation of goods or 
package. 

A Ribbed Surface, for roofing. 

Vertical Colored Stripes on Package, for face and toilet paper. 

REGISTRATIONS UNDER TEN-YEAR RULE. 

Nothing in the preceding paragraph will prevent the registration of 
any mark used by the applicant or his predecessors, or by those from 
whom title to the mark is derived, in commerce with foreign nations or 
among the several States or with Indian tribes, which was in actual and 
exclusive use as a trade-mark of the applicant, or his predecessors from 
whom he derived title, for ten years next preceding February 20th, 1905. 

WHO MAY EFFECT REGISTRATION. 

Any owner of a trade-mark used in commerce with foreign nations, 
or among the several States, or with Indian tribes, provided : 

(a) Such owner is domiciled within the territory of the United 
States; or, 

{b) Resides in or is located in any foreign country which, by treaty, 
convention, or law, affords similar privileges to the citizens of the United 
States; but in such case the applicant must have registered the rnark in 
the foreign country in which he resides or is located, and file a certified 
copy of the certificate of such registration in the Patent Office. 



Registrations in U. S. Patent Office. 17 

(c) Any owner who though domiciled in a foreign country has a 
manufacturing estabUshment within the territory of the United States, 
may register marks used on- the products of such estabHshment. 

The word ''owner" applies to and includes firms, corporations, and 
associations, as well as a natural person. 

CLASSIFICATION OF MERCHANDISE. 

Below I give the official classification of merchandise for the pur- 
poses of registration. It should be remembered that each registration 
embraces only the goods named in the application, and in a single 
class only. An applicant may, at his option, include any or all goods 
in such class, provided that the mark has been actually used upon all 
the goods specified. 

REGISTRATION IN MORE THAN ONE CLASS. 

Where a trade-mark has been used upon goods included in more 
than ohe class, separate applications should be filed for each such class 
to cover the goods included in that class. 

SERIES OF MARKS. 

Where a manufacturer or trader has used two or more trade- 
marks upon goods embraced in a class, separate applications are re- 
quired for each of said marks, and where such marks have been used 
upon goods included in several distinct classes, separate applications 
are required for each mark in each of such classes. 

CLASSES. 

1. Raw or partly prepared materials. 

2. Receptacles. 

3. Baggage, horse equipments, portfolios and pocketbooks. 

4. Abrasive, detergent, and polishing materials. 

5. Adhesives. 

6. Chemicals, medicines, and pharmaceutical preparations. 

7. Cordage. 

8. Smokers' articles, not including tobacco products. 

9. Explosives, firearms, equipments, and projectiles. 

10. Fertilizers. 

11. Inks and inking materials. 

12. Construction materials. 

13. Hardware and plumbing and steam-fitting supplies. 

14. Metals and metal castings and forgings. 

15. Oils and greases. 

16. Paints and painters' materials. 

17. Tobacco products. 

19. Vehicles, not including engines. 

20. Linoleum and oiled cloth. 

21. Electrical apparatus, machines, and supplies. 



1 8 Registrations in U. S. Patent Office. 



22. Games, toys, and sporting goods. 

23. Cutlery, machinery, and tools, and parts thereof. 

24. Laundry appliances and machines. 

25. Locks and safes. 

26. Measuring and scientific appliances. 
2J. Horological instruments. 

2%. Jewelry and precious-metal ware. 

29. Brooms, brushes, and dusters. 

30. Crockery, earthenware, and porcelain. 

31. Filters and refrigerators. 

32. Furniture and upholstery. 

33. Glassware. 

34. Heating, lighting and ventilating apparatus, not including elec- 

trical apparatus. 

35. Belting, hose, machinery packing, and nonmetallic tires. 

36. Musical instruments and supplies. 

37. Paper and stationery. 

38. Prints and publications. 

39. Clothing. 

40. Fancy goods, furnishings, and notions. 

41. Canes, parasols, and umbrellas. . 

42. Knitted, netted, and textile fabrics, 

43. Thread and yarn. 

44. Dental, medical, and surgical appliances. 

45. Beverages, nonalcoholic. 

46. Foods and ingredients of foods. 

47. Wines. 

48. Malt extracts and liquors. 

49. Distilled alcoholic liquors. 

50. Merchandise not otherwise classified. 

Note : Class 18 was abolished February 24, 1909. 

SEARCHES AS TO NOVELTY. 

In order to ascertain whether any certain trade-mark has already 
been appropriated and registered for a specific class of goods, it is usual 
and advisable to make a search covering the registered marks in the Pat- 
ent Office in such class. This may be quickly done, only a few days' time 
being required, and the cost is moderate. (See also same heading under 
"State Registrations.") 

APPLICATION FOR REGISTRATION. 

Documents Required. 

A complete application for the registration of a trade-mark comprises 
the following parts : 

(a) Petition, signed by the applicant. A power of attorney, if an 
attorney is appointed, should be included in this document. 



Registrations in U. S. Patent Office. 19 

(b) Statement, signed by the applicant. This must specify the name, 
domicile, location, and citizenship of the party applying, and if the appli- 
cant be a corporation, or association, the State or nation under the laws 
of which organized ; the class of merchandise, and the particular descrip- 
tion of the goods comprised in such class upon which the trade-mark has 
actually been used ; a statement of the manner in which the same is ap- 
plied and affixed to the goods, and the length of time it has been used upon 
such goods. A description of the mark itself shall be included if required 
by the Commissioner, or if desired by the applicant, but in the latter case 
it must be of a character to meet the approval of the Commissioner. 

(c) Declaration, signed by the applicant, under oath, before any 
person within the United States authorized by law to administer oaths, 
or, in a foreign country, before any minister, charge d'affaires, consul, or 
commercial agent holding commission under the Government of the 
United States, or before any notary public, judge, or magistrate having 
an official seal and authorized to administer oaths in the foreign country 
in which the applicant may be, whose authority shall be proved by the 
certificate of a diplomatic or consular officer of the United States, the 
declaration being attested in all cases by the proper official seal of the 
officer before whom the same is made. When the person before whom 
the declaration is made is not provided with a seal, his official character 
must be established by competent evidence, as by a certificate of a clerk 
of a court of record, or other proper officer having a seal. 

(d) Drawing of the trade-mark on bristol board, substantially the 
same requirements and rules as for patents. 

(e) Five specimens (or facsimiles, when, from the mode of apply- 
ing or affixing to the goods, specimens cannot be furnished) of the trade- 
mark as actually used upon the goods. A few extra copies should be 
added for the attorney's use. 

(/) The government fee of ten dollars. 



Applicants in Foreign Countries. 

(g) If the applicant resides or is located in a foreign country he 
must, unless the application relates to a trade-mark used upon goods 
made in a manufacturing establishment within the United States, set forth 
that the trade-mark has been registered by him, or that an application for 
registration thereof has been filed by him in the foreign country in which 
he resides or is located, and give the date of such registration or applica- 
cation. A certified copy of the certificate of such registration must be 
filed before the certificate of registration in this country will be issued. 

(h) If the applicant resides or is located in a foreign country he 
must, before the issuance of the certificate of registration, file a notice in 
writing designating some person residing within the United States on 
whom process or notice of proceedings affecting the right of ownership 
of the trade-mark may be served with the same force and effect as if 
served upon the applicant or registrant in person. 



20 Registrations in U. S. Patent Office. 

PROCEDURE IN PATENT OFFICE. 

Examination. 

Applications are examined as to form and merits. When the ex- 
aminer of trade-marks finds reasons for objections or refusal of registra- 
tion, the applicant is notified, the reasons for objections or refusal stated, 
and such information and references given as may be useful in the fur- 
ther prosecution, if any. 

If it appear that registration is proper, the mark will be published in 
the Official Gazette at least thirty days prior to the date of registration to 
permit of opposition being filed by parties believing they would be 
damaged by such registration. If no notice of opposition is filed within 
thirty days' time, notice of the allowance of the application is given, and 
a certificate of registration will be issued and bear date as of the fourth 
Tuesday following the first Thursday thereafter. 

Amendments. 

The statement may be amended to correct informalities, or to avoid 
objections made, or for other reasons arising in the course of examination, 
but no amendments may be made to the description or drawing unless 
warranted by something in the specimens or facsimiles originally filed. 
A declaration cannot be amended. If necessary, a substitute declaration 
may be filed. 

Amendments may be made after allowance of an application, if the 
case has not been printed, on the recommendation of the examiner, ap- 
proved by the Commissioner, without withdrawing the case from issue. 

OPPOSITIONS. 

Any person who believes he would be damaged by the registration of 
a mark may oppose the same by filing a written notice of opposition, ac- 
companied by the fee of ten dollars, stating the grounds therefor, within 
thirty days after the publication in the Official Gazette of such mark. 
This notice of opposition must be verified by the person filing the same 
before one of the officers designated to take declarations. (See Docu- 
ments Required, above.) 

An opposition may be filed by a duly authorized attorney, but must be 
duly verified by the opposer, within a reasonable time after such filing, 
or it will be null and void. 

In case of opposition the examiner of interferences takes charge of 
the case and gives notice to the applicant or registrant, who must make 
answer at such time, not less than thirty days from the date of notice, 
as shall be fixed by the examiner. The practice in opposition cases fol- 
lows, as nearly as possible, the practice in interference proceedings. 

INTERFERENCES. 

An interference will be declared whenever an application is made for 
the registration of a trade-mark which is substantially identical with a 
mark appropriated to goods of the same descriptive properties for which 
a certificate of registration has been issued to another, or for which ap- 
plication for registration has been previously made by another, or which 



Registrations in U. S. Patent Office. 21 

so nearly resembles such trade-mark, or a known trade-mark owned and 
used by another, as, in the opinion of the Commissioner, is likely to be 
mistaken therefor by the public. 

All preliminary questions must have been settled before such declara- 
tion, the mark must have been decided to be registerable, and it must have 
been published at least once in the Official Gazette. 

The practice follows, as nearly as practicable, the practice in inter- 
ferences in patent matters. 

If two or more applicants claim substantially the same registerable 
mark, and the application of one of them is ready for publication, the 
examiner may require the other applicants to put their applications in 
condition for publication within a specified time in order that an inter- 
ference may be declared, and if any party fail to do so, the declaration 
of interference will not be delayed, but the application of such party will 
be held for revision and restriction after final judgment, subject to other 
interferences. 

The examiner of interferences may, either before or in his final 
decision, direct the attention of the Commissioner to any matter which 
cannot be acted upon by him, which in his opinion precludes a proper 
determination of questions raised by the proceedings, or amounts to a 
statutory bar to the registration of the mark. In such case the Commis- 
sioner may, before judgment, suspend the interference or opposition and 
remand the case to the examiner of trade-marks for his consideration of 
such matters. If the case be not so remanded, the examiner of trade- 
marks will, after judgment, consider any matter affecting right to regis- 
tration which may have been brought to his attention, unless the same 
shall have been previously disposed of in the proceeding. 

Motions may be made to dissolve an interference upon the ground 
that, (a) no interference in fact exists; (b) that there has been such ir- 
regularity in declaring the same as will preclude a proper determination 
of the question of the right of registration; (c) or denying the register- 
ability of an applicant's mark. 

Such motions, and all motions of a similar character, should be made, 
if possible, not later than the thirtieth day after the notices of the declara- 
tion of interference have been mailed, and should be accompanied by a 
motion to transmit the same to the examiner of trade-marks. The ex- 
aminer of interferences will thereupon notice the latter for hearing upon 
a day certain. 

When in proper form the motion to dissolve will be transmitted for 
determination to the examiner of trade-marks, who will fix a day certain 
for the hearing of the motion upon the merits, and give notice thereof 
to all the parties. 

If a stay of proceedings is desired, a motion therefor should accom- 
pany the motion for transmission. 

Motions to shift the burden of proof should be made before the 
examiner of interferences for his determination, from whose decision 
thereon there is no appeal, though the matter may be reviewed on appeal 
from the final decision upon the question of priority. 

The decision of the examiner of trade-marks, upon a motion for 
dissolution, is binding upon the examiner of interferences unless reversed 
or modified upon appeal. 



22 Registrations in U. S. Patent Office. 



All preliminary questions having been settled, terms are fixed by the 
examiner within which testimony may be taken by all the parties, and, the 
testimony having been duly filed, determination is made as to the facts as 
to the adoption and use, and the rights of the several parties, the first to 
adopt and use the mark being entitled to registration thereof. 

CANCELLATIONS. 

Any person, deeming himself to be injured by the registration of a 
trade-mark, may, at any time, make application for the cancellation of 
such registration. The application must state the grounds for cancel- 
lation, and is required to be filed in duplicate, and must be verified by the 
applicant before one of the officers named under "Declaration" on page 19. 

The examiner of interferences will then give notice thereof to the 
registrant of the mark, who must make answer at such time, not less than 
thirty days from the date of the notice, as shall be fixed by the examiner. 

The proceedings follow, as nearly as practicable, the practice in 
interferences in patent matters. 

If it appears, after a hearing, that (a) the registrant was not entitled 
to the use of the mark at the date of his application for registration there- 
of, or, (b) that the mark is not used by the registrant, or, (c) that it has 
been abandoned, and the examiner of interferences so decides, the Com- 
missioner will cancel the registration of the mark, unless an appeal be 
taken from such decision within the time limit fixed. 

(See also 'Tnterfering Registered Trade-Marks," page 25.) 

APPEALS. 

An appeal may be taken to the Commissioner by petition upon any 
proper question which has been acted upon by the examiner of trade- 
marks, not involving the merits of the mark claimed, the refusal of 
registration thereof, or a requirement for division, without payment of a 
government fee. A time will be fixed for hearing such petition, and the 
examiner required to furnish a written statement of the grounds of his 
decision upon the matters averred in such petition, and furnish a copy 
thereof to the petitioner, within five days after being notified of the order 
fixing the day of hearing. 

From an adverse decision of the examiner of trade-marks upon an 
applicant's right to register a trade-mark, or to renew a registration, or 
from a decision of the examiner of interferences, an appeal may be taken 
to the Commissioner upon payment of a fee. 

From an adverse decision of the Commissioner in the cases named 
in the last paragraph only, an appeal may be taken to the Court of Ap- 
peals of the District of Columbia in the manner prescribed by the rules 
of that court. 

DATE AND DURATION OF REGISTRATION. 

Certificates of registration for registerable trade-marks are issued 
after allowance and publication of the mark in the Official Gazette. The 
weekly issue closes on Thursday, and certificates of registratipn of that 
issue bear date as of the fourth Tuesday thereafter. 



Registrations in U. S. Patent Office. 23 

A certificate of registration remains in force for twenty years from 
its date unless the trade-mark has been previously registered in a foreign 
country, in which case such certificate ceases to be in force on the day on 
which the mark ceases to be protected in such foreign country, and in no 
case remains in force more than twenty years unless renewed. 

OLD REGISTRATIONS. 

Certificates of registration in force on the first day of April, 1905, 
will remain in force for the periods for which they were issued, and are 
renewable under the provisions, conditions, and for the periods of time, 
prescribed by the present law. 

RENEWAL OF REGISTRATION. 

A certificate of registration may be renewed from time to time for 
like periods, upon application by the registrant, his legal representatives, 
or transferees of record in the Patent Office, and upon payment of new 
fees. Such application may be made at any time not more than six months 
prior to the expiration of the period for which the certificate of registra- 
tion was issued or renewed. 



ASSIGNMENTS. 

Every registered trade-mark, and every mark for the registration 
of which application has been made, together with the application for 
registration thereof, is assignable in connection with the good-will of 
the business in which the mark is used. Such assignment must be in 
writing, and duly acknowledged according to the laws of the country 
or State in which the same is executed. 

An assignment is void as against any subsequent purchaser for a 
valuable consideration, without notice, unless it is recorded in the 
Patent Office within three months from its date. 

A certificate of registration may be issued to the assignee of an 
applicant, provided the assignment is of record in the Patent Office. 

INFRINGEMENTS. 

The registration of the trade-mark is prima facie evidence of 
ownership. Any person who shall, without the consent of the owner 
thereof, reproduce, counterfeit, copy, or colorably imitate any such 
trade-mark and affix the same to merchandise of substantially the 
same descriptive properties as those set forth in the registration, or to 
labels, signs, prints, packages, wrappers, or receptacles intended to be 
used upon or in connection with the sale of such merchandise, and 
shall use, or have used, such reproduction, counterfeit, copy, or color- 
able imitation in commerce among the several States, or with a foreign 
nation, or with the Indian tribes, shall be liable to an action for dam- 
ages therefor at the suit of the owner thereof. 



24 U. S. Registrations — Infringements. 



Exemplary Damages. 

The court may enter judgment in any such action, in which a 
verdict is rendered for the plaintiff, for any sum above the amount 
found by the verdict as the actual damages, according to the circum- 
stances of the case, not exceeding three times the amount of such 
verdict, together with the costs. 

Jurisdiction of Courts. 

The circuit and territorial courts of the United States and the Su- 
preme Court of the District of Columbia have original jurisdiction, 
and the circuit courts of appeals of the United States and the Court of 
Appeals of the District of Columbia have appellate jurisdiction on all 
suits at law or in equity respecting registered trade-marks, without 
regard to the amount in controversy, and without regard to the resi- 
dence of the parties. 

_ Writs of certiorari may be granted by the Supreme Court of the 
United States for the review of cases in the same manner as provided 
for patent cases. 

Injunctions. 

The several courts vested with jurisdiction have power to grant 
injunctions to prevent the violation of any right of the owner of a regis- 
tered trade-mark, on such terms as the court may deem reasonable, and 
may enforce the same by proceedings to punish for contempt, or other- 
wise. 

Accounting for Profits — Damages. 

Upon a decree being rendered in any such case for wrongful use 
of a trade-mark the complainant is entitled to recover, in addition to 
the profits to be accounted for by the defendant, the damages the com- 
plainant has sustained thereby, and the court will assess the same or 
cause the same to be assessed under its direction. The court may also 
increase such damages, in its discretion, as stated under "Exemplary 
Damages." 

In assessing profits the plaintiff is only required to prove defend- 
ant' sales only; the defendant must prove all elements of cost neces- 
sary. 

Seizure of Counterfeits. 

In any case involving the right to a registered trade-mark, in 
which the verdict has been found for the plaintiff, or an injunction 
issued, the court may order that all labels, signs, prints, packages, 
wrappers, or receptacles in the possession of the defendant, bearing 
the trade-mark of the plaintiff or complainant, or any reproduction, 
counterfeit, copy, or colorable imitation thereof, be delivered up and 
destroyed. 

Exceptions. 

No action or suit can be maintained under the provisions of the 
trade-mark laws in any case where the mark is used in unlawful busi- 
ness, or upon any article injurious in itself, or where the mark has 
been used with the design of deceiving the public in the purchase of 
merchandise, or has been abandoned, or upon any certificate of regis- 
tration fraudulently obtained. 



U. S. Registratioxs — Infringements. 25 



FRAUDULENT REGISTRATIONS. 

Any person who procures registration of a trade-mark, or entry 
thereof, by a false or fraudulent declaration or representation, oral or 
in writing, or by any false means, is liable to pay any damages sus- 
tained in consequence thereof to the injured party, to be recovered by 
an action on the case. 

INTERFERING REGISTERED TRADE-MARKS. 

W^henever there are interfering registered trade-marks, any per- 
son interested in any one of them may have relief against the inter- 
fering registrant, and all persons interested under him, by suit in 
equity in the United States courts. The court, on notice to adverse 
parties, and other due proceedings had according to the course of 
equity, may adjudge and declare either of the registrations void in 
whole, or in part, according to the interest of the parties in the trade- 
mark, and may order the certificate of registration to be delivered up 
to the Commissioner of Patents for cancellation. 

COUNTERFEITED MARKS OR NAMES- 
PROHIBITION OF ENTRY. 

Xo article of imported merchandise which shall copy or simulate 
the name of any domestic manufacture, or manufacturer or trader, or 
of any manufacturer or trader located in any foreign country which, 
by treaty, convention or law affords similar protection to citizens of 
the United States, or which shall copy or simulate a duly registered 
trade-mark, or bear a name or mark calculated to induce the public to 
believe that the article is manufactured in the United States, or that 
it is manufactured in any foreign country or locality other than in the 
country or locality where it is in fact manufactured, will be admitted 
to entry at any customs-house of the United States. 

The act does not affect names or trade-marks previously recorded 
in the Treasury Department, and as to them the protection granted 
so far as concerns prohibition of importation continues. 

The act does not appear to make it compulsory for manufacturers 
or traders to register names (not trade-marks) in the Patent Office, in 
order to prevent illegal importations, but they are required to obtain 
due registration of their trade-marks, before the Treasury Department 
can act with respect thereto. 

• In order to aid the officers of the customs in enforcing this pro- 
hibition, the manufacturer or trader should make application to the 
Treasury Department, stating the name of the owner, his residence, 
and the locality in which his goods are manufactured, and in case of 
trade-marks a certified copy of the certificate of registration must be 
filed, and the names of the ports to which facsimiles should be sent 
should be given. A sufficient number of facsimiles should accompany 
the application to provide one copy for each port named with ten 
additional copies for the files of the department. 

In case of the name of a domestic manufacture, manufacturer or 
trader (not trade-mark), proper proof of ownership, and of the coun- 



26 U. S. Registrations — Marking Required. 

try or locality in which the goods are manufactured must be filed, 
which must consist of the affidavit of the owner or one of the owners, 
certified by an officer entitled to administer oaths and having a seal. 
(See "Declarations," page 19.) 

MARKING REQUIRED. 

Registrants of trade-marks must give notice to the public of such 
registration, either by affixing to the mark the words "Registered in 
U. S. Patent Office," or "Reg. U. S. Pat. Off., or when, from the char- 
acter or size of the trade-mark, or from its manner of attachment to the 
article to which it is appropriated, this cannot be done, then by affixing 
a label containing a like notice to the package or receptacle wherein 
the article or articles are inclosed. 

In any suit for infringement by a party failing to give notice as 
above, no damages shall be recovered, except on proof that the defend- 
ant was duly notified of infringement, and continued the same after 
such notice. 



Foreign Registrations. 27 



Trade-Marks in Foreign Countries^ 

UNITED STATES AND FOREIGN PRACTICE 
COMPARED. 

Marked differences exist between the law and practice in the United 
States and that prevaiHng in foreign countries with respect to trade- 
marks. The following points of difference are fundamental and should 
be carefully considered. 

(a) In the United States the ownership of a trade-mark belongs to 
the first person who actually adopts and uses the mark upon a specific 
class or article of merchandise, and his rights to the same will be pro- 
tected even without the actual registration of the mark. 

On the contrary, in most foreign countries adoption and user does 
not confer ownership, which can only be secured by the actual registra- 
tion of the mark. 

(b) In the United States adoption and user of a mark is a prere- 
quisite to its registration. 

On the contrary, in most foreign countries adoption and user is not 
a prerequisite to registration, and any person may register any mark 
which is not already registered there in the name of another person, and 
once he has effected the registration his ownership is complete in most 
cases whether he has ever or will ever use the mark or not. 

(c) In the United States adoption and use, or registration of a 
mark, is not conclusive of ownership, but the right may be successfully 
contested by a prior adopter and user of the same mark upon the same 
class of articles. 

On the contrary, in most foreign countries registration is either con- 
clusive of ownership regardless of use, or becomes conclusive after a 
specified time from the date of registration if the registration is uncon- 
tested. 

(d) In the United States generic and descriptive terms, geographical 
or place names, and surnames, are usually not subject matters that may 
be exclusively appropriated as trade-marks. 

On the contrary, in most foreign countries the laws are more lenient 
in this regard, and in many countries such terms or names may be regis- 
tered as valid marks and become very valuable for trading purposes. 

(e) In the United States the ownership of the mark extends only 
to its use upon the actual goods or articles for which it has been adopted, 
and upon which it has been used in commerce. 

In most foreign countries, on the contrary, a mark may be registered 
for all the articles embraced in a general class regardless of use, so as to 
cover not only all articles upon which it has been used, but also all articles 
embraced in the class to which it may thereafter be applied. This per- 
mits a broad range of protection and allows for legitimate trade expan- 
sion in the same class of goods. 



28 Foreign Registrations. 



REGISTRATION OF TRADE-MARKS IN FOREIGN 

COUNTRIES. 

We are prepared to attend to the registration of trade-marks, 
and, wherever possible, of wrappers, labels, tickets, packages, and 
advertising matter, in all the countries of the world. 

A member of our firm, who is a counsellor at law, has had over 
30 years' experience in patent and trade-mark practice, and, for at 
least 25 years of this time, has attended to the foreign patent and 
trade-mark business of a great many American patent attorneys. 

We have reliable representatives in every important country in 
the world, who have been selected for their ability and trustwor- 
thiness, and we are in a position to insure prompt, careful and satis- 
factory service in all patent and trade-mark matters either before or 
after protection has been obtained. 

REGISTRATION AS AN INSURANCE. 

Trade-miarks that have become publicly and widely known either 
through advertising or long continued use, are generally regarded as 
one of the most valuable assets of a business. 

To insure this important property against loss is therefore a 
sound business proposition.' 

Such an insurance can be effected by means of registration at an 
exceedingly moderate cost as compared with the value of the property 
insured. 

Assume the cost of registration to be $75 per country (the cost 
is much less in many cases), and the term of registration to be fifteen 
years, the cost of insurance against loss is then only $5 per year, for 
each country in which registration is made, a remarkably low rate 
considering the value of. the property protected. 

IMPORTANCE OF REGISTERING MARK 
EXACTLY AS USED. 

In a number of foreign countries the courts have distinguished 
between a registered mark and an imitation thereof, because of the 
fact that the mark as actually used upon the packages was not the 
same as the mark aci:ually registered, and because the imitation pre- 
sented distinguishing characteristics not found in one or both of the 
others, and unscrupulous traders taking advantage of this condition 
have been able to escape the penalties which would arise under the 
laws of other countries. 

This has been particularly true with respect to the South Ameri- 
can countries. Efiforts are being made to secure the correction of this 
evil, but so far without pronounced success. 

Manufacturers and traders should therefore see to it that their 
marks as actually used by them are placed upon the register. 

REGISTRATION BY CLASSES. 

It is desirable for foreign registrations, where the same are not 
based upon the United States registration, that the same should be 
effected upon as wide a statement of goods, included within one gen- 



Foreign Registrations. 29 

eral class, as possible, so that even while owners may not be able to 
sue for infringement, if the mark is used on goods not of the same 
general description as those in which they are for the time trading, 
their broad registration acts to prevent competitors from securing the 
registration of a similar mark in that class on the same or similar 
goods, and thus leaves the ground open for the owner's legitimate 
trade expansions. 

Moreover, this course saves the expense of constantly registering 
the mark for additional goods in such class. 

This is of particular advantage to owners who are continually in- 
creasing their lines of trade, for as their trade expands with the ad- 
dition of new articles,, which require separate registrations at home to 
fully protect the mark as applied thereto, their foreign registrations, 
if properly drawn, have "covered the new articles in advance. 

RENEWALS OF REGISTRATION. 

These can generally be obtained for successive terms indefinitely. 
Except as indicated in the notes following the ''Schedule of Charges" 
such renewals are granted for the same terms as the original regis- 
trations, after the same procedure by application, and at the same 
costs. 

COUNTRIES HAVING TRADE-MARK TREATIES 
WITH THE UNITED STATES. 

The following countries have entered into treaties or conventions 
with the United States for the reciprocal registration and protection of 
trade-marks : Austria-Hungary y Belgium, Denmark, France, Germany, 
Great Britain, Italy, Japan, Roumania, Russia, Servia, Spain. 

The United States is also a member of the International Con- 
vention for the Protection of Industrial Property, of which thirty-one 
countries are members, and of the Pan-American Convention, par- 
ticulars as to which will be found in the following pages. 

The International Convention gives a four months' right of pri- 
ority for filing separate applications in the other member countries, to 
the owners of trade-marks who have regularly applied for registration 
thereof in the United States, this priority commencing from the filing 
date of the U. S. application. 

TRADE-MARK CONVENTIONS. 

The Berne Trade-Mark Convention. 

The following fifteen countries are members of this Convention, viz. : 
Austria, Belgium, Brazil, Cuba, Czechoslovakia, France with Algeria 
and Colonies, Holland zvith Dutch East Indies Surinam and Curagao, 
Hungary, Italy, Mexico, Morocco (French territory ), Portugal zvith the 
Azores and Madeira Islands, Spain, Szuitzerland, Tunis. 

The United States is not a member, and no advantage can be taken 
of the Convention by American citizens or corporations, nor even by 
branches of American business houses in such countries. Nor can inter- 



30 Foreign Registrations. 

national registrations effected under the Convention be assigned to citizens 
or corporations of non-member countries. 

This Convention provides that upon the payment of a single fee of $20 
to the Central Bureau at Berne, the rights acquired by a registration ob- 
tained in one of the countries of the Convention are extended to cover 
the remainder of the countries belonging to the Convention. 

It should be pointed out in this connection that American manufac- 
turers and traders who have not registered their marks in these countries 
are exposed to the danger of having their marks appropriated by trade- 
mark pirates and registered in these countries under the Convention, so 
that the rightful owners may find that they are debarred from the use of 
their own marks there, their goods being liable in such case to confiscation 
on arrival at ports of entry in these countries, while they may be con- 
demned to pay damages for infringement of their own marks, which will 
be owned by enemy rivals in such countries. The only remedy is to 
promptly register all useful marks before trade rivals have an opportunity 
of misappropriating them. 

The International Convention for the Protection of Indus- 
trial Property. 

The following thirty-two countries are members of this Union, viz. : 
Australia, Austria, Belgium^ Brazil, Ceylon, Cuba, Curacao, Czecho- 
slovakia, Denmark and Faroe Islands, Dutch East Indies, France and 
Colonies, Germany and Colonies, Great Britain^ Holland, Hungary, Italy, 
Japan, and Korea, Mexico, Morocco (French territory), N&w Zealand, 
Norway, Poland, Portugal, San Domingo, Servia, Spain and Colonies, 
Surinam, Sweden, Szvitzerland, Trinidad and Tobago, Tunis, United 
States. 

Registration in one of the countries belonging to the Union does not 
have the effect of affording protection in the other countries of the Union 
without separate registration in each country. It is provided, however, 
that an owner who has regularly filed his application for registration in 
his own country enjoys a period of priority of four months from the date 
of such application, for filing his application for registration in the other 
Union countries. 

PAN AMERICAN CONVENTION. 

This is a Convention between the North, Central and South 
American Republics, and includes Cuba, San Domingo, and Haiti, of 
the West Indies. 

For administrative purposes these countries have been divided into 
two groups; the Northern group, which includes the North and Central 
American Republics and the West India Islands; and the Southern 
group which embraces the South American Republics. 

A Bureau has been established at Havana which will attend to the 
transaction of the necessary business of the Northern group, and has 
also undertaken to attend to the business of the Southern group of coun- 
tries until such time as the Bureau of the latter, ^vhich will be established 
at Rio de Janeiro, will be open for business. 

The purpose of the Convention is to provide a simple and inex- 
pensive method whereby trade-marks which are registered in the home 



Foreign Registrations. 31 



country may also be protected in all the countries belonging to the Con- 
vention by means of a single registration at the Convention Bureaus. 

It must be noted, however, as regards the Northern group of coun- 
tries, that while the Havana Bureau is open for business, and, so we are 
officially informed, at least ninety applications for registration have 
already been forwarded to this Bureau by the U. S. Commissioner of 
Patents, that Mexico and Salvador have not yet ratified the treaty, and, 
we are unofficially advised, that at least one country that ratified the 
treaty has renounced the same or is about to do so. 

The situation with respect to the Southern group of countries is 
even more unsatisfactory, as the Convention has not been ratified as yet 
by the Argentine Republic, Chile, Columbia, Peru, Uruguay and 
Venezuela, which are the very countries which have, up to now, been the 
principal piratical field for unscrupulous traders. 

This Convention can therefore hardly be regarded as effective as 
yet. In fact, imder date of November i, 191 9, the Pan American Union 
advised us, in response to our inquiry, that in order to obtain protection 
in any countries in Latin America at this time that it is necessary to 
obtain separate registration in each country. 

It may also be of interest to note that the Convention countries, 
almost without exception, have failed to enact the necessary local legis- 
lation to carry the provisions of the treaty into effect. 

In view of the fact that the Convention is still in the process of 
evolution and establishment, and as continual changes are taking place in 
the position of the various signatory countries with reference thereto, 
we suggest that our correspondents refer to us for the latest information 
on the subject before seriously considering taking any steps under the 
provisions of this Convention. 

In conclusion we would add that any registrations now made 
through the Commissioner of Patents at the Havana Bureau cannot be 
effective in the countries that have not ratified the Convention, and, in 
our opinion, are, at the present time, of doubtful sufficiency in other 
countries. 

DANGERS OF FAILURE TO REGISTER 

American manufacturers, traders, and exporters of merchandise 
to foreign countries run a very real and grave danger if they fail to 
register and protect their trade-marks in the various countries in 
which their goods are or may be sold. 

Goods which are advertised, or become popular by use and sale 
and become known by their marks or names are quickly imitated or 
counterfeited if the rightful owners do not properly protect them by 
registration before misappropriation can take place. 

An even greater danger lies in the liability to the piracy of well- 
known marks by unscrupulous foreign traders, who, especially in late 
years, have not hesitated to use and register in their own names 
valuable marks belonging to American and other manufacturers, 
thereby acquiring the property in such marks in the foreign countries 
in which they are so registered to the exclusion of the legitimate 
owners, who are thereby prevented from using their own lawful 
trade-marks or names in such countries. I have treated this subject 
more fully under "Piracy of Trade-Marks," below. 



32 Piracy of Trade-Marks. 

If an owner fails or neglects to protect his trade-marks abroad 
until the happening of one or the other of the above events, he is face 
to face with the following facts : (a) he must either tamely submit to 
the flooding of his market with goods which are often very inferior, 
and which bear imitations or counterfeits of his name or marks; or, 
(b) in countries where registration is not conclusive of ownership, he 
must engage in costly and often protracted litigation or negociations 
to establish his ownership, and stop the imitation or counterfeiting; 
or, (c) in countries where registration is conclusive of ownership, he 
must either cease using his own marks, or be liable for damages for 
the use thereof by the registrants, or acquire the right to the use by 
negociation or purchase, which has in the past, in many cases, been a 
very expensive and vexatious proceeding. 

PIRACY OF TRADE-MARKS. 

The fact that the laws of many foreign countries make registra- 
tion conclusive of ownership, the first applicant for the registration 
of a trade-mark being regarded as the actual owner of the mark, 
whether he has used the mark or not, opens a wide field for the mis- 
appropriation of valuable trade-marks. 

All that the unscrupulous trader need do is to ascertain what 
trade-marks have acquired or ace likely to acquire value by rea- 
son of a large use or sale, or extensive advertising or other publicity 
methods, and then proceed to register such marks in his own name 
in any or all such countries in which they are not already protected 
by a prior registration in the name of the actual owners. 

This done, the unscrupulous trader becomes the owner of the 
trade-marks in the countries in which he has secured the registrations, 
and finds himself in a position to dictate his own terms to the original 
users of the marks whenever the latter attempt to protect their trade- 
marks in these countries, or to export goods bearing the marks to 
countries where they have been so registered. 

The original owners, who have rriade the marks valuable, are, in 
such cases, at the mercy of the registrant of the marks. Their goods 
may be refused entry, or even confiscated in the countries where such 
registrations have taken place, and they can usually only recover the 
right to use their own marks by arrangement with the registrant and 
paying the price demanded by him. 

In our Schedule of Charges for registration of trade-marks in 
foreign countries, at the end of this booklet, we indicate the countries 
in which the first applicant or the registrant of a trade-mark is re- 
garded as the owner of the mark irrespective of user, and, therefore, 
the countries in which the piracy of trade-marks is most to be feared. 

We reported in our January ''FACTS" an instance of wholesale 
piracy, an account of which has appeared in quite a number of prominent 
newspapers and journals recently. 

An individual by the name of Manuel de Silva Carmo, of Oporto, 
Portugal, visited America not long ago. He was evidently familiar with 
the trade mark situation, and knew that American manufacturers had 
failed to realize the importance of protecting their marks by means of 
registrations in foreign countries, or at least had failed to do so in many 
instances. He evidently was also aware that in many countries, par- 



Piracy of Trade-Marks. 33 

ticularly the Latin countries, the first appHcant for the registration of a 
mark is regarded as the actual owner of the same regardless of the ques- 
tion of user, and furthermore that he could not only register unprotected 
marks in his own country but that, this being done, he could then by a 
single registration under the provisions of the Berne Convention secure 
the ownership of such marks in each one of the twelve other countries 
belonging to the Convention, provided only that the actual owners had not 
already obtained prior registration of their marks in some or all of these 
countries. 

Evidently selecting the automobile industry as likely to be the most 
valuable for his purposes, he applied on July 14, for the registration in 
his own name in Portugal of some thirty-seven important automobile 
trade marks, among them being Chandler, Veile, Bartholemew, Paige, 
Cole, Grant, Auburn, Kissel, Chalmers, Stutz, Austin, McFarlan, Saxon, 
Mutual, Winton, Dorris, Buick, Bailey, Chevrolet, Mitchell, Hackett, 
Moline, Jordan, Maxwell, Monroe, Oakland, Mercer, Maline-Plow, 
F. R. Stearns, National, Howard, Westcott, White, Hal-Motor, Jackson, 
Elkhart, Haynes. 

Carmo had already obtained registration in thirteen countries of the 
trade marks of five American cars. 

Two facts should be noted : 

(a) That he is able to apply for the registration of these marks in 
all other countries where the American owner has not already filed his 
own application for registration, and in which no evidence of use or prior 
registration abroad is required, without waiting for his Portuguese regis- 
trations, and that, where the laws of the country regard the first applicant 
for registration as the owner, the trade mark will become his property, 
and that in other countries such registration will become conclusive of 
ownership after a limited time, if uncontested; and 

(b) That as soon as his Portuguese registrations become effective he 
can file certified copies of the same in countries requiring evidence of regis- 
tration in the applicant's home country, and obtain registration of the 
marks there. 

It will thus be seen that Carmo wa^ in a position to practically domi- 
nate the world's markets for any mark that the American owner had 
neglected to protect in foreign countries. 

Fortunately, however, in the present instance it may be possible 
to prevent, in some measure at least, this wholesale piracy. We under- 
stand that the Portuguese registrations have not as yet been completed, 
and that although the time for taking action is very limited, that steps 
have been taken to oppose the registrations in favor of Carmo. The 
National Automobile Chamber of Commerce, and the American Manu- 
facturers' Export Association, have entered the fight, and have asked the 
active aid of the Department of State of the United States which will 
undoubtedly be given. 

The pirating of American trade marks is more prevalent, and carried 
on to a far greater extent, than is commonly believed. 

We are informed that prior to the war a firm in Hamburg, Germany, 
made a business of pirating unprotected marks, and they are said to have 
registered hundreds of such marks in different countries, and to have 
realized large sums from the actual owners who only recovered the use 
of their trade marks by purchasing the right to use them. 



34 Piracy of Trade-Marks. 

In an article in our January "FACTS," we reported the piracy of 
some fifty trade-marks in Brazil. We are advised that extensive 
piracy is also being carried on in Mexico and some of the other South 
American countries, and in a recent Official Journal of the Argentine 
Republic we noted the registration of five or six well known and valu- 
able American cigarette marks in the name of a Latin American. 

The case of the Austrian, Richard Mittler, who in 1918 obtained 
registration under the Berne Convention of the trade marks for a number 
of the best known American tires, is generally known. The actual owners 
have so far failed to secure the cancellations of Mittler's registrations, 
although they hope to be able to get relief under the provisions of the 
Peace Treaty, if and when this is ratified by the United States. 

The situation in South America generally, but particularly in the 
Argentine Republic, has been very unsatisfactory for years past, and it 
is no exageration to say that hundreds of American marks have been 
pirated in this country. 

Japanese, Germans, Austrians, and even Scandanavians have also 
been offenders, although it must be said in all fairness that trade mark 
piracy is not confined to any particular locality or people. Hundreds of 
American trade marks have been misappropriated throughout the world. 

As recent examples of misappropriation may be instanced an attempt 
in Spain to register the marks "Peerless," "Golden," and "F. W. D." for 
automobile trucks; "Corona" for typewriters; "3 in i" oil; "Havoline" for 
lubricants. In Cuba "Diamond Grid" for storage batteries; "Kirsch- 
baum" for clothing; "Fashion Park" for cloth; "Kissel Kar" and 
"McFarlan" for automobiles. In Uruguay "Commerce Trucks." In Japan 
"Coco-Cola," and "A. C." for spark plugs. In the Argentine Republic 
"Marmon" and "Stutz" for automobiles. This list could be added to in- 
definitely. 

The following extract is reprinted from "Commerce Reports," is- 
sued by the Bureau of Foreign and Domestic Commerce of the United 
States Department of Commerce. 

"THE NECESSITY OF TRADE-MARK 
REGISTRATION ABROAD." 

"The apparent increase in the number of unauthorized ap- 
plications for the registration of American trade-marks abroad 
calls for an emphatic reminder of the necessity of early registra- 
tion of valuable trade-marks, especially in those foreign countries 
where the ownership of marks is based upon registration. The 
countries of Latin America have furnished a particularly profit- 
able field for the registration of trade-marks for speculative pur- 
poses as most of those countries grant the exclusive right to use a 
mark to the first applicant without regard to its prior use by 
another. Nearly every issue of the official bulletins of some 
Latin-American countries contains applications for trade-mark 
registration that are evidently fraudulent or at least unauthor- 
ized. The names of automobiles, motor trucks, pharmaceutical 
preparations, and other articles the sale of which depends largely 
upon advertising and good will have been particularly subject to 
misappropriation, and recently a single firm applied for the re- 



Piracy of Trade-Marks. 35 

gistration of the trade-marks of six among the best-known Ameri- 
can cars. If registration had been granted, it would have been 
practically equivalent to the acquisition of an exclusive agency 
for the importation of each of these six cars in one of the most 
important foreign markets for automobiles unless the manufac- 
turers were willing to adopt a new trade-mark for that particular 
market. 

"In another case the designation 'Ford American Products' 
was sought to be registered in a South American country for all 
classes of goods. The effect of this registration would probably 
have been to give to the local registrant absolute control over the 
use of the word 'Ford' on all goods sold in that country. This 
latter case is illustrative of the difficulties that may arise when a 
trade-mark used in the United States by various manufacturers 
for dift'erent classes of goods is registered abroad in such a way 
as to cover several of these classes. Even if the mark is regis- 
tered in good faith by one entitled to its use, the form of regis- 
tration may nevertheless prevent the use of the mark on a distinct 
kind of goods by another manufacturer except with the consent 
of the prior registrant. 

DANGERS OF REGISTRATION IN 
NAME OF AGENT. 

"A somewhat different but none the less embarrassing situa- 
tion may be presented when a mark is registered in the name of 
the local agent of the American manufacturer or' exporter. As 
long as the exclusive agency continues there are usually no diffi- 
culties, but should the principal desire to make a change in the 
agency arrangements he may find that the agent has it in his 
power to prevent the importation of the trade-marked goods 
except when consigned to him or under such terms as he may 
dictate. This danger has been further emphasized since the out- 
break of the war by the experience of some exporters with agents 
of enemy nationality. The placing of the name of the agent on 
the Enemy Trading List has resulted in a suspension of ship- 
ments to the former agent, while the control of the trade-mark 
through registration in the name of the agent has prevented ship- 
ment from being made to any others except under a different 
mark. It is hoped that some relief from this difficulty may be ob- 
tained through a modification of the procedure for the cancellation 
of unauthorized registrations, but in the meantime no shipments 
of the trade-marked goods can be made to countries where firms 
of enemy nationality control the trade-mark. 

"The applications for trade-mark registration published in 
the official gazettes of the countries where the most difficulties 
have been experienced are examined regularly in the Bureau of 
Foreign and Domestic Commerce in order, so far as possible, to 
discover unauthorized attempts to appropriate American trade- 
marks, and the interested persons are notified. Several hundred 
of such notices have been sent out in recent months, and in some 
cases the rightful owners have been enabled to prevent the loss 
of their marks. It is impossible, however, to identify many of 



3^ Piracy of Trade-Marks. 



the marks examined, and frequently the owner of the mark can 
not be located. The time that necessarily elapses before the pub- 
lications are received from the more remote countries like Ar- 
gentina is often sufficient for the local applicant to complete re- 
gistration before any opposition can be brought. 

"The only safe course to follow is to register trade-marks promptly 
in the name of the manufacturer in countries where any considerable 
business is carried on or anticipated. Even if exportation at the present 
time is limited by war conditions, the registration of the mark abroad 
may well be regarded as one of the fundamental steps of preparation for 
trade after the war. It is perhaps of even greater importance now than 
under normal conditions in view of the reported activity of enemy 
agents and others appropriating American trade-marks. The expense 
of registration usually represents only a reasonable outlay for the pro- 
tection of good will, and it is suggested that any article which is worth 
advertising abroad is v/orth protecting by means of trade-mark regis- 
tration. * * * Unless a company is represented abroad by agents of 
unquestionable competency it is generally preferable to have the entire 
business handled by an experienced attorney in the United States who 
has connections in foreign countries. * * * " 

STATEMENT BY ANSEL B. CLARKE. 

The following statement by Ansel B. Clarke, New York manager of 
the United States Bureau of Foreign and Domestic Commerce, will be 
found of great interest in this connection. We make the following ex- 
tract from an article published in the New York Journal of Commerce, 
January 6, 1920: 

'Tn connection with the reported registration of American Auto- 
mobile trade marks by a man in Oporto, Portugal, may I be permitted to 
bring to the attention of those interested the fact that this is but one of a 
seemingly unending series of cases wherein American manufacturers and 
exporters, through a failure to properly investigate the foreign markets 
they intend entering, are faced by the necessity of purchasing from an in- 
dividual they regard as a complete outsider the right to use their own 
trade mark. This failure to investigate the field and to protect themselves 
is to me a strange phenomenon in the case of American business men, as it 
would never occur in their domestic markets, and only does occur when 
they enter trade outside their own country. It is a twin sister to their de- 
ficiencies, now being rapidly overcome, in the matter of packing and 
pleasing the customer. 

"Such occurences can only be explained upon the ground that it 
requires a period of four years for even the American to adjust himself 
to a new field. 

"The above expression is made for the reason that for more than 
six years the United States Government has maintained a bureau with 
practically no other duties than those of 'fostering our foreign trade,' 
chiefly through the giving of information, advice and assistance to our 
manufacturers and traders in their efforts to enter and estabHsh them- 
selves in every country in the world. This is the Bureau of Foreign and 
Domestic Commerce. 

"In addition to this Government bureau, there are in the United 
States many dozens of both national and local trade associations and 



Piracy of Trade-Marks. 



0/ 



trade publications, some of which maintain special trade mark depart- 
ments, with competent experts in charge, and these, as well as our leading 
forwarding companies and our larger banks, have, since several years 
before the United States entered the world war, been periodically sending 
out in every conceivable form of publicity the repeated message that 
foreign sales of branded goods could not safely be carried on without due 
attention to the registration of trade marks. 

"In spite of the above, certain enterprising gentlemen in the various 
countries of the world continue to carry on a more thriving and prosper- 
ous existence by the registration of trade marks whose sole value has 
been attained through the domestic enterprise of American firms. 

''Difficulties of this sort in South America are best known to our 
American firms chiefly because South America has been the scene of our 
greatest commercial activity during the years of the war, and many 
American houses found that section of the world the easiest point of 
entry into international commerce. That trade mark piracy is not con- 
fined to South America, however, is almost daily evidenced by the specific 
warnings sent out from this office to American firms that their trade 
marks are in danger in many other foreign countries. Most of these 
countries are included among the fourteen signatories of the Berne Trade 
Mark Convention, although similar difficulties are encountered in coun- 
tries not included in that Convention. 

"Not long ago we called to the attention of one of the greatest shoe 
manufacturers in the United States the fact that his distinctive trade 
marks, bearing as its most prominent feature a representation of his 
product together with the maker's name, was being freely used by a con- 
cern in Scandinavia, who was in no way connected with the American 
house. Fortunately, the laws of the country in which this misrepresenta- 
tion was being carried on permitted protection upon prosecution of the 
offender. Such was not the case in the instances of one of our nationally 
known flour manufacturers, a piano house, and another shoe concern in 
the Argentine, nor was protection available in the Federated Malay Straits 
Settlements to one of our best known makers of fountain pens when a 
Japanese firm openly violated not only their trade mark, but the general 
appearance of the article covered. 

"Our files are full of reports on trade mark violation and many in- 
teresting peculiarities are included. One of these is the case of a manu- 
facturer of one of our leading brands of safety razors, who before the 
war conducted his European distribution through a German dealer. Owing 
to the pecuHarities of the laws of certain countries, this company found 
it expedient to register their trade mark in those countries under the 
name of the German dealer. After our entry into the war, this German 
dealer had a similar razor manufactured in Germany and sold it under 
the American trade mark in all of the neutral markets then open to 
German goods. Of course, no recourse was open to the American house." 

In conclusion we can only repeat the advice we have so many times 
given to our correspondents. If you export goods, or expect to enter 
foreign trade, your only safe course is to register your trade marks, your 
slogans, and so far as possible your advertising matter, in all the foreign 
countries to which your goods are being sent, or will be sent, and do this 
— wherever possible — before your goods reach these countries, or be- 
come widely known therein through your advertising or publicity methods. 



38 Foreign Registrations. 



If you fail to do this you may find that piratical dealers have closed 
your markets to you, and that goods sent by you to foreign countries 
will either be prevented from entry, or even be liable to confiscation, in 
case your trade marks have been misappropriated and registered by a 
foreigner. 

GREAT BRITAIN— SPECIAL NOTICE. 

A new Amendment Act came into force on January i, 1920. Un- 
der its , provisions any trade-mark which has been actually used in 
trading operations in Great Britain (whether for manufacture, sale, 
or transshipment purposes) for a period of two years, may be regis- 
tered by the user thereof, no matter what may be the nature of the 
mark. 

This opens the way to the registration of many marks which 
were unregisterable under the law before this amendment. For ex- 
ample, geographical terms, surnames, and even descriptive words, 
may now be registered if they have been actually used in a bona fide 
way as trade-marks in trading operations in Great Britain for a 
period of two years. 

GERMANY-AUSTRIA-HUNGARY. 

The Federal Trade Commission has granted a blanket license to 
resume the filing and prosecution of applications in "enemy and ally 
of enemy countries" for letters patent, and for registration of trade- 
marks, prints, labels, and copyrights. There is, therefore, no obstacle 
to the registration of trade-marks in these countries. 



Schedule of Charges — United States. 39 



Registrations in the United States 

SCHEDULE OF CHARGES. 

All charges are payable in advance, cash with order, unless other- 
wise agreed upon. 

The charges include preparation and filing of necessary papers, pay- 
ment of official fees, and prosecution of applications in ordinary cases 
but do not include special services in appeals, or contested cases such as 
oppositions, interferences or cancellations, the charges for which cannot be 
determined in advance, but which will be fair and reasonable for the 
services rendered. 

Copies of the trade-mark as actually used, are to be supplied to us 
together with a statement naming the different articles of merchandise 
upon which so used, and the earliest date of use upon such articles. 

In the Several States. 

Searches of prior registration, each State $10.00 

Registration of mark in each State i5-00 

Assignments, preparing and recording, each State 7.50 

In the United States Patent Office. 

Searches of prior registrations $7.50 

Applications for Registration of Trade-Marks : 

One mark, in single class from $35.00 

Each additional class for same mark from 35.00 

Each additional mark in same class .from 35.00 

Application for renewal, each mark from 25.00 

Assignments, preparing and recording. 

For 300 words or under. $5-00 

Over 300 and under 1,000 words 7.50 

If over 1,000 words 12.50 

Appeals. — As these involve the preparation and filing of briefs, and, when 
desired, a personal hearing before the Commissioner of Patents in 
person, charges cannot be named in advance, but will be subject to 
agreement. 

^ ... [ As these involve more or less protracted proceedings 

r V J! ' ) before the examiner of interferences, charges cannot be 

Interferences, I ,. , x. ^ ^^^ -i u-^x 

^ jj J.- \ named m advance but will be subject to agreement m 

each case. 



40 Schedule of Charges — Foreign Countries. 

Registrations in Foreign Countries 

SCHEDULE OF CHARGES. 

All Former Schedules of Charges are Cancelled. 

The charges named below cover the usual inclusive cost of making 
application for the registration of trade-marks in the countries named, 
but are necessarily subject to change without notice, as there are frequent 
changes in governmental fees, stamp duties, and other costs. 

All charges are payable as follows: One-half thereof on giving the 
order; the remaining one-half when the applications are in readiness for 
transmission for filing. 

Clients are expected to provide a copy of the mark as actually used 
upon the goods. For countries where registration in the United States 
is a prerequisite the copy furnished should agree with the mark as regis- 
tered in this country. We prepare and furnish the necessary electrotypes 
and copies of the mark required for filing in the foreign countries from 
the copy thus supplied. If an electrotype is furnished it should not 
measure more than i% inches in either length or width, otherwise extra 
costs are incurred for which charge must be made. 

The charges include preparation of all documents ; legalization of all 
powers of attorney where necessary ; procurement of certified copies of 
U. S. registration when required, authentication of same at Interior and 
State Departments, and subsequent legalization of same; making draw- 
ings, when required; the payment of government filing, registration and 
stamp fees ; and our own and our foreign representatives' fees for 
prosecuting the application and obtaining registration in uncontested 
•cases. 

The charges do not include special services in contested cases, for 
translations, arguments, amendments, oppositions, appeals and like special 
actions, the charges for which cannot be determined in advance, but which 
will be fair and reasonable for the services rendered. 

EXPLANATION OF SCHEDULE. 

The figures in the first column opposite the name of each country 
state our charge for an application for registration in that country. Con- 
tinuing across the page the figures in the second column show the number 
of years for which protection is given. Renewals may usually be ob- 
tained for similar terms successively. 

In the third column we state whether a registration of the mark in 
the home country is a prerequisite to registration in the foreign country. 
Where a prior registration is required in some country other than the 
United States we state the name of that country. 

In the last or right hand column we indicate opposite each country 
the person regarded as the owner of a mark by the laws of that country. 
Where the term ''first user" is employed it may be taken that it means 
the first user in that particular country, subject, however, to rights, if 
any, under treaty arrangements or under the International Convention. 
It must be understood, therefore, that the owner of a mark in this coun- 
try should register the same in the foreign country before any other 
person, acting in good faith, adopts, uses and registers the trade-mark 
there. 



Schedule of Charges — Foreign Countries. 



41 



In countries where the first appHcant or the registrant is regarded 
as the owner, the prompt registration of trade-marks is essential if it is 
desired to protect trade in the goods upon which the marks are used. 

Notes : The figures following the names of countries refer to the 
notes following the schedule, to which reference should be made to un- 
derstand the special practice in such countries. The letters in parenthesis 
in the last column refer to the foot-notes at the end of the schedule. 



COUNTRY Charge 

North America 

Canada (Specific) (i) $50.00 

Canada (General) (i) 55-00 

Mexico (2) 45-00 

Newfoundland 60.00 

Europe 

Austria 45-00 

Belgium 45-00 

Bulgaria 78.00 

Channel Is. — Guernsey 45-00 

Channel Is. — Jersey 45-00 

Czecho-Slovakia 60.00 

Denmark 65.00 

Finland 50.00 

France and Colonies 45-00 

Germany and Colonies S5-00 

Gibraltar (Adv.) 65.00 

Great Britain 40.00 

Greece (and Crete) 85.00 

Holland 55-00 

Hungary 45-00 

Iceland 60.00 

Italy 55.00 

Jugoslavia 60.00 

Luxemburg 40,00 

Malta and Gozo 60.00 

Norway 50.00 

Poland 50.00 

Portugal 45.00 

Roumania (3) 55-00 

Russia 65.00 

Servia 1 10.00 

Spain and Colonies (4) 65.00 

Sweden 65.00 

Switzerland 45-00 

Turkey 110.00 

South America 

Argentine 70.00 

Bolivia 85.00 

Brazil, on U. S. Reg'n (5) 80.00 

Brazil, no U. S. Reg'n (5) 120.00 

British Guiana 60.00 

Chile (21 ) 60.00 

Colombia 100.00 

Ecuador 90.00 

Falkland Is 65.00 

Panama lOO.oo 

Paraguay 80.00 

Peru (6) 75.00 

Surinam (Dutch Guiana) 50.00 

Uruguay 95.00 

Venezuela (7) 65.00 



Term , 
Years ^ 


Is U.S. 


Regarded 


Registration 


as 


Necessary ? 


Owner 


24 


No 


First User (a) 


Unlimited 


No 


First User (a) 


20 


No 


First User 


Unlimited 


No 


Proprietor (b) 


10 


Yes 


First User 


Unlimited 


No 


First User (a) 


10 


Yes 


First Applicant (f) 


14 


Yes 


Registrant 


14 


Yes 


Registrant 


10 


Yes 


Registrant 


10 


Yes 


Registrant (f) 


10 


Yes 


Registrant 


15 


No 


First User (a) 


10 


Yes 


First Applicant 


10 


No 


First Applicant 


14 


No 


First User (a) 


10 


Yes 


First User 


20 


No 


First User 


10 


Yes 


First User 


10 


Yes 


Registrant (f) 


Unlimited 


Yes 


First User 


10 


Yes 


Registrant 


10 


No 


First User 


14 


No 


Registrant 


10 


Yes 


Registrant 


10 


Yes 


Registrant 


10 


Yes 


First Applicant (g) 


15 


Yes 


Registrant 


10 


Yes 


Registrant (h) 


10 


Yes 


Registrant 


20 


Yes 


First User (b) 


10 


Yes 


First Applicant 


20 


Yes 


Registrant 


15 


No 


Registrant 


10 


No 


Registrant 


10 


No 


Registrant (e) 


15 


Yes 


First Applicant 


15 


No 


First Applicant 


14 


No 


First Applicant 


10 


No 


First Applicant 


20 


No 


Registrant 


20 


No 


Registrant (d) 


14 


British 


Registrant 


10 


Yes 


Registrant 


10 


No 


Registrant 


10 


No 


Registrant 


20 


No 


First User 


10 


Yes 


Registrant 


30 


Yes 


Registrant 



42 



Schedule of Charges — Foreign Countries. 



COUNTRY Charge 

Central America 

British Honduras (Adv.) 60.00 

Costa Rica (8) 65.00 

Guatemala (9) 85.00 

Honduras (10) 90.00 

Nicaragua 65.00 

Salvador 85.00 

West Indies " 

Bahamas 55-00 

Barbados (12) 60.00 

Bermuda 60.00 

Cuba 65.00 

Curagao (Dutch W. I.) 60.00 

Dominican Republic 75-00 

Grenada (Adv.) 60.00 

Haiti 60.00 

Jamaica 65.00 

Leeward Is 55-00 

Porto Rico (Registration) 45.00 

Porto Rico ( filing copy U. S. ) ( 13 ) 25.00 

St. Lucia 60.00 

St. Vincent (Adv.) 55-O0 

Trinidad and Tobago 60.00 

Virgin Is 50.00 

Australasia 

Australian Commonwealth 65.00 

Fiji Is 65.00 

New Zealand 45-00 

Asia 

British North Borneo 75-00 

Burmah 60.00 

Ceylon 65.00 

China (Shanghai) (14) 30.00 

China (Tientsin) (14) 35.00 

Cyprus 75.00 

Dutch East Indies 60.00 

Feder. Malay States (Adv.) (15) 60.00 

Hong Kong 110.00 

India (British) (16) 47.00 

India (Upper) (17) 47.00 

Japan and Korea 60.00 

Manchuria 60.00 

Mysore (Adv.) 65.00 

Oman (Adv.) 65.00 

Philippine Is 55-00 

Portuguese Colonies (19) 

Macao 45-00 

Portuguese India 45.00 

Timor 45-00 

Siam 75.00 

Straits Settlements 60.00 

Africa 

Belgian Congo 60.00 

East Africa Protectorate 60.00 

Egypt A Registration (20) 40.00 

Egypt B Registration (20) 75.00 

Egypt C Registration (20) 105.00 

Eritrea 65.00 

Gambia, British 65.00 

Gold Coast Colony and Ashanti.. 75.00 

Liberia 75-00 





Is U. S. 


Regarded 


Yelrs Registration 


as 


^^^^^ Necessary ? 


Owner 


10 


No 


First Applicant 


15 


No 


First Applicant 


10 


Yes 


First Applicant 


Unlimited 


Yes 


Registrant 


10 


No 


Registrant 


20 


No 


Registrant (d) 


14 


No 


First Applicant (c) 


Unlimited 


No 


Registrant 


14 


No 


First User (d) 


15 


Yes 


First Applicant 


20 


No 


First User 


20 


Yes 


Registrant 


10 


No 


First Applicant 


Indefinite 


No 


First Applicant 


14 


No 


Registrant 


14 


No 


Registrant (d) 


20 


No 


First User (b) 


20 


Yes 


Registrant 


14 


No 


First Applicant (c) 


Unlimited 


No 


First Applicant 


14 


No 


Registrant 


U. S. Term Yes 


Registrant 


14 


No 


First User (b) 


7 


No 


Registrant 


14 


No 


First User (b) 


Unlimited 


No 


First Applicant 


Unlimited 


No 


First User 


14 


No 


First Applicant (d) 


Unlimited 


Yes 


Registrant 


Unlimited 


Yes 


Registrant 


14 


No 


First Applicant (c) 


20 


No 


Registrant 


10 


No 


First Applicant 


14 


No 


First Applicant (c) 


Unlimited 


No 


First User 


Unlimited 


No 


First User 


20 


No 


Registrant 


Unlimited 


Yes 


Registrant 


Unlimited 


No 


First User 


Unlimited 


No 


First Applicant 


30 


No 


First User 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


12 


No 


Applicant 


14 


British 


Registrant 


Unlimited 


No 


First User 


14 


No 


Registrant (c) 


10 


Yes 


Registrant 


10 


Yes 


Registrant 


10 


Yes 


Registrant 


Unlimited 


Italy 


Registrant 


14 


No 


Registrant 


14 


No 


First Applicant (c) 


14 


No 


Registrant 



Schedule of Charges — Foreign Countries. 



43 



COUNTRY Charge 

Mauritius 65.00 

Morocco 60.00 

Nigeria, Southern, and Lagos... 75-00 

Nyasaland, British 60.00 

Portuguese Colonies (19) 

Angola 45-00 

Cape Verde 45-0O 

Guinea 4500 

St. Thomas and Prince Is 45-00 

East Coast, Gov't Territory 45.00 

East Coast, Nyasa Co.'s Terr.. . 45.00 
East Coast, Mosambique Co.'s 

Territory 45-00 

Rhodesia 80.00 

Seychelles Is 60.00 

Sierra Leone (Adv.) 75-00 

South Africa (Union) 65.00 

St. Helena (Adv.) 60.00 

Sudan (Adv.) 65.00 

Tunis 50.00 

Zanzibar 70.00 





Is U.S. 


Regarded 


Vparc 


Registration 


as 




Necessary? 


Owner 


Unlimited 


No 


First User (b) 


20 


No 


Registrant 


14 


No 


First Applicant (c) 


14 


British 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


10 


Portugal 


Registrant 


14 


No 


Registrant 


14 


No 


Registrant 


10 


No 


First Applicant 


14 


No 


First Applicant (c) 


Unlimited 


No 


First User 


Unlimited 


No 


First Applicant 


14 


No 


First User 



14 



British Registrant 



(a) The first user is regarded as owner but rights dependent on registration. 

(b) Registration is prima facie evidence of ownership. 

(c) Registration is prima facie evidence of ownership — conclusive after 7 years. 

(d) Registration is prima facie evidence of ownership — conclusive after 5 years. 

(e) After i^ years registrant's right is incontestable. 

(f) Registrant's right conclusive after i year. 

(g) Incontestable after 6 months, 
(h) Incontestable after 3 years. 



44 Notes to Schedule of Charges. 



Notes. 

(Adv.) In a number of countries there is no provision for registra- 
tion, but the laws provide penalties for false marking. It is usual in these 
countries to establish evidence of ownership, and to warn the public 
against imitating by advertising the mark in the official or other local 
papers. 

1. Canada. A Specific mark is onef used upon specified goods in a single 
class ; a General mark is one that is used by the owner for all trade 
purposes. 

2. Mexico. Marks used by merchants must contain the notice "Marca 
de Comercio, Registrada," or the abbreviation "M. de C, Rgtrda" 
and the number and date of registration. Marks used by manufac- 
turers, traders, etc., must contain the notice ''Marca Industrial Regis- 
trada," or the abbreviation "M. Ind. Rgtrda" and the number and 
date of registration. If a mark consists of or contains words or 
letters, it must include as a conspicuous feature the name of the 
owner and the place where his establishment is located. 

3. Ronmania. Foreigners may effect registration only when they are 
citizens of countries having treaty relations with Roumania on the 
subject. The United States has such treaty relations. 

4. Spain. Taxes are payable every five years. Our charge for eflfecting 
such payments is: fifth year, $10.00; tenth year, $12.50; fifteenth 
year, $15.00. 

5. Brazil. The smaller charge applies when the mark has been regis- 
tered in the home country and a copy of the certificate of registration 
is filed with the application ; the larger charge applies when an inde- 
pendent application is made without reference to a prior registration. 
When the certified copy of the home registration and the certificates 
attached thereto exceed 500 words, a charge of $3.00 per 100 words 
is made for additional translation and publication. 

6. Peru. Firms and corporations are required to furnish evidence of 
their legal existence. 

7. Venezuela. While the term of registration is thirty years, the pro- 
tection ceases at the end of the term of the prior registration in the 
home country. 

8. Costa Rica. Successive renewals may be made for ten years each. 

9. Guatemala. Registration is granted to foreigners only when they are 
citizens of countries having treaty relations with Guatemala upon the 
subject. The United States has such treaty relations. Guatemala is 
also a member of the Pan-American Convention. 

10. Honduras. Applicant must have, or appoint, a local agent for the 
sale of his goods. 

11. Salvador. Under a recent decree, taxes are now payable for each 
year of the duration. The charge named includes the taxes for the 
first five years. Our charge is $5.00 per year for effecting payment 
oi each year's tax thereafter. 



Notes to Schedule of Charges. 45 

12. Barbados. To obtain protection for a mark registered in a country 
adhering to the International Union, it is sufficient to advertise such 
registration in Barbados ; otherwise the mark must be registered 
there. The cost is the same in either case. 

13. Porto Rico. Protection may be obtained in two ways: (a) by in- 
dependent registration; or, (b) by fiUng a certified copy of the \]. S. 
certificate of registration. 

14. China. Marks may either be registered at the Consulate and Customs 
Bureau at Shanghai, or the Consulate and Customs Bureau at Tien- 
tsin, or at both places, as desired. An additional registration may 
also be made at the U. S. Embassy at Pekin. 

15. Federated Malay States. These include Negri Sembilan, Pahang, 
Perak, and Selangor. 

16. India. No registration act is in force, but an act exists for the 
punishment of false marking, and it is the practice to record marks 
in the Office for the Registration of Deeds. 

17. India (Upper). No registration law exists, but the Chamber of Com- 
merce has established an unofficial register. 

18. Philippine Islands. Protection is now secured by an independent 
registration. 

19. Portuguese Colonies. Registration must first be effected in Portugal, 
and protection thereafter extended to the desired Colony or Colonies. 

20. Egypt. Registration may be made at the Courts either of (a) Cairo, 
Alexandria or Mansurah, or at the Courts of (b) two, or (c) all of 
said places. 

21. Chili. To manufacturer's marks should be added the initials "M. de 
F.," and to all commercial marks "M. C," as notice of registration. 

SPECIAL. 

We make a practice of advising our correspondents 
regarding important developments and changes in the law 
and practice in the United States and foreign countries 
with reference to patents and trade-marks. 

We make no charge for this service. 

We will be glad to add your name to our mailing list if 
you care to have this information. 

RICHARDS & GEIER, 

277 Broadway, 

New York. 



INDEX 



PAGES 

Trade-Marks, in General 3 to 12 

Trade-Marks Defined 3 

Rightful Users of Marks 3 

Mode of Affixing Marks 3 

Trade-Marks Are Property 4 

Adoption and Use of Mark Necessary 4 

Priority of Adoption and Use 4 

Valid Trade-Marks 4 

Invalid Trade-Marks 5 

Examples of Invalid Marks • 6 

What May Be Valid Marks 6 

Examples of Valid Marks 7 

Descriptive and Suggestive Marks Distinguished 7 

Trade-Names 8 

Unfair Competition, in General 8 

Copying or Imitation of Circulars 9 

Substitution of Goods 9 

Secondary Meaning, Doctrine of 9 

Duration of Right, in General 10 

Abandonment 10 

Laches, Acquiescence 10 

Misrepresentation and Fraud 10 

Loss of Distinctiveness ii 

Actions for Infringements and Unfair Competition 11 

Suggestions for Selection of Trade-Marks 11-12 

Registration of Trade-Marks, in General 13 

State Registrations 13 

Searches as to Novelty 13 

Applications for Registration 13 



PAGES 

Registration in U. S. Patent Office 14 to 23 

The Law 14 

Advantages of this Registration 14 

What May Be Registered 14 

What May Not Be Registered 14-15 

Examples of Unregisterable Marks 15-16 

AppHcations Under Ten-Year Rule 16 

Who May Effect Registrations 16 

Classification of Merchandise 17 

Registration in More Than One Class 17 

Series of Marks 17 

Qasses, List of 17 

Searches as to Novelty 18 

Applications for Registration 18 

Documents Required i8-iv9 

Applicants in Foreign Countries 19 

Procedure in Patent Office 20 

Examination of Applications 20 

Amendment of Applications 20 

Oppositions to Registrations 20 

Interferences 20-21 

Cancellation of Registered Marks 22 

Appeals 22 

Date and Duration of Registration 22-23 

Old Registrations 23 

Renewal of Registration 23 

Assignments 23 

Infringements 23 to 25 

Exemplary Damages 24 

Jurisdiction of Courts 24 

Injunctions 24 

Accounting for Profits, Damages 24 

Seizure of Counterfeits 24 

Exceptions 24 

Fraudulent Registrations 25 

Interfering Registered Marks 25 

Counterfeit Marks or Names, Prohibition of Entry 25 

Marking Required 26 



PAGES 

Trade-Marks in Foreign Countries 27 to^ 45 

United States and Foreign Practice Compared 27 

Registration of Trade-Marks in Foreign Countries. 28 

Registration as an Insurance 28 

Importance of Registering Mark Exactly as Used 28 

Registration, by Classes 28 

Renewal of Registrations 29 

Countries Having Tr.\de-Mark Treaties With U. S 29 

Trade-Mark Conventions 29 to 31 

The Berne Convention 29 

The International Convention 30 

The Pan-American Convention 30-31 

Dangers of Failure to Register Abroad 31 

Piracy of Trade-Marks 32 to 37 

Extract from "Commerce Reports" 34 

"The Necessity of Registering Abroad" 34 

Dangers of Registering in an Agent's Name" 35 

Statement by Ansel B. Clarke 36 

Great Britain, Special Notice 38 

Germany- Austria-Hungary 38 

Schedule of Charges 39 to 45 

State Registrations 39 

Registrations in U. S. Patent Office 39 

Registrations inForeign Countries 40 to 45 



LIBRARY OF CONGRESS 



019 970 284 1 



WILLIAM E- RICHARDS 

Counsellor at Law 

OSCAR A. GEIER 

Patent Attorney 



Telephone 
WORTH 5255 
Cable Address 

RICHATTY.NEWYORK 



RICHARDS iS- GEIER 

277 BROADWAY. NEW YORK 

NOTICE 

We attend to all kinds of Patent, Trade Mark, Design, 
and Copyright work in all countries of the world. Over 

30 years experience. 

RICHARDS ^ GEIER. 



